Transcript Intellectual Property Issues in Exporting Tamara Nanayakkara Counsellor Small and Medium sized Enterprises Division World Intellectual Property Organization.

Intellectual Property Issues in
Exporting
Tamara Nanayakkara
Counsellor
Small and Medium sized Enterprises Division
World Intellectual Property Organization
The H-racer is the smallest hydrogen fuel cell car in the world. The car uses a
real fuel cell and its own on-board hydrogen storage system and it does not
need batteries. The Hydrogen Station will provide the H-racer with an
unlimited supply of clean energy. To create free hydrogen fuel add water to
the station's tank! Fueling is animated by a special blue light display.
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Patent
Design
Trademark
H-racer – Horizon technologies
Copyright
Trade secret
1.Competitive Advantage
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The IP system (through patents, design
rights, trademarks, GI, copyright and trade
secrets) provides exclusivity over the
exploitation of innovative products and
services, creative designs and business
identifiers
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Protects the product in the market
Exploit through licensing
Prevent a competitor
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The right to prevent others from using and
benefiting from that creativity also means you
have to respect the rights of others
Imitation is the most sincere form of flattery
but do not “flatter”others. Avoid infringement.
Analyze freedom to operate by conducting a
search as to whether there are other similar
or conflicting IP registered in that market (or
used - trademarks)
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H2 Registered by GM in OHIM, hydrogen fuel cell
technologies registered
2. IP Protection is territorial
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It is important to keep in mind that IP are only
valid in the country or region in which they
have been granted. Therefore applying for IP
registration in other countries is important if
there is an intention to export
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IP considerations are also relevant in deciding on
the destination market; high tech companies are
reluctant to go into markets that are not “IP
friendly”
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Some provisos to the general principle that
registration has to be sought in the
destination country
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Copyright is automatically available through the
provisions of the Berne Convention. No
requirement of registration
Trademarks also could be valid through use
Some countries recognize unregistered designs
Trade secrets by definition are not registered
Obtain IP Rights Internationally National Route
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National route - Apply in each country,
pay fees, translation into national
languages
Obtain IP Rights Internationally Regional Route
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Benelux Office for IP (TM and Designs)
African Regional Industrial Property Office (ARIPO)
Eurasian Patent Office
European Patent Office
Office for the Harmonization of the Internal Market
(TM and Designs)
Organisation Africaine de la Propriété Intellectuelle
(OAPI)
Patent Office of the Cooperation Council for the
Arab States of the Gulf
Obtain IP Rights Internationally International Route

WIPO Administers the Madrid, Hague and PCT Systems for
the international registration of marks, designs and patents
 Madrid and Hague – international application valid in the
designated countries unless rejected within a specified time
 PCT – international application subject to international
phase (international search and patentability report – and a
preliminary examination report, if required) followed by the
national phase. Here the designated countries decide on
patentability
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This also means that if a particular invention,
design or trademark has not been protected
in a particular country by registration (or in
the case of trademarks by use) it is available
for use by third parties
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Do not enter into a license in these situations. It is
not necessary
3. Differing national systems
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Trademarks: use  registration
Patents: first-to-file  first-to-invent
Software: copyright  patents
Databases: copyright  sui generis
Designs or works of applied art: copyright  ID
4. There are deadlines for applying
for IP protection abroad...
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Priority Period
Once an application for a patent or design right has
been made domestically an international application
has to be made within the “priority period”. Once that
period has lapsed it is too late to apply as novelty
has been lost.
Patents: 12 months
Designs: 6 months
5. Disclosing a product without protection
could be risky
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Patents and designs are required to be novel to
merit protection
If a product needs to be disclosed it should be
done in a confidential context (NDA).
If not, the novelty could be lost and an
application for registration be rejected
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Grace period in some countries
Attention while displaying at industrial fairs
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H-racer introduced at german toy fair
6. Suitability of trademarks
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Check whether the mark has undesired
connotations or is likely to be rejected in that
country
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Chevrolet marketing its Nova car in Latin America (Nova = no go)
Initial Chinese characters used by coca cola in China (“bite the
wax tadpole”. Later changed to “happiness in the mouth”)
Gerber picture of happy baby. In parts of Africa, label denoted
what was in the bottle
7. Beyond Exclusivity
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When relationships such as JVs, licensing
and franchising arrangements are formed,
using IP as a strategic tool, knowledge (and
not necessarily a product) is exported.
Owning IP translates into a greater
bargaining strength in entering into such
partnerships.
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issues of control, use and exploitation arise as well as of
ownership of new IP
Some countries have rules governing what can be exported
and with whom it does business with
The Corgi H2GO is a world first because you can actually steer it unlike
previous models which went in a straight line. It works by charging the filling
station using the solar panel, then pouring water into the chamber where it
breaks down into hydrogen. The hydrogen is then turned into electricity using
a fuel cell. It can do two days of continuous driving on less than a glass of
water.
8. Enforcement - border measures
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Under the TRIPS Agreement a state must
adopt procedures enabling a right-holder
suspecting the importation of counterfeit
trademark or pirated copyright goods, to
apply to the customs for confiscating the
goods
They could even act on their own without an
application
Check list *
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Know what you have
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Decide which information, secrets, processes are
of value and treat it accordingly
Decide which IPR needs to be registered in which
market
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Design products and services to minimize risk of
abuse
Retain critical design and production activities in
home country
Change key elements in products and packaging
regularly
Incorporate tracers or fingerprinting into
product/package design
Know your markets and business partners
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Avoid risky markets or test them with older
technologies
Perform due diligence checks on contractors and
partners
Maintain direct· contact and visits with production
sources and distributors
Monitor production, packaging, overruns, supply
chain.
Know your distributors, markets, staff, and
customers
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Careful design and production
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Educate them about value of your genuine
products/services
Collect information from them about possible fakes
Use non-disclosure or secrecy agreements
Insert IPR protection clauses in commercial
contracts
Work with the experts
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Seek advice before trouble arises
Consider using in-house legal team, patent
attorneys, auditors, investigators
Inform IPR-related authorities about your products
and keep in touch with them
*IPR Help Desk Bulletin No 36 November – December 2007 “ Intellectual
Property Rights (IPR): “Be prepared”, Stephanie Mitchell,
Administrator, DG Enterprise and Industry - European Commission