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Protecting your Intellectual property abroad

Intellectual property (IP) may be a company’s most valuable asset. Firms considering exporting are to consider developing a global IP strategy that connects to their business strategy. Businesses should take steps to protect their IP assets and exploit them to the greatest extent possible based on their business strategy. Registration of IP in Canada provides protection only in Canada. Similar protection is also required in targeted markets.

How do I protect my intellectual property (IP) in a foreign market?

Navigating through IP protection might not exactly be the most tranquil journey. Follow these 9 steps to learn more about IP and IP management as you prepare to export.

Understand the business offer

Before proceeding: do you know what IP rights you may need?

Step 1: Consider your offer (Product or service variations)

When considering the best IP protection for your business, it is important to consider your product offering and the services that may be part of your offer. Some examples to consider:

Top considerations at this stage:

Next: Let’s discuss the business need as it relates to the value in your organization.

Discover IP rights and type

Before proceeding: do you clearly understand the business value that can be generated for various IP rights you may have or could secure?

Step 2: Identify your current IP assets and what IP rights offer the most value

There are multiple types of IP protection available, and their value will depend on the technology or business needs you are looking to protect. It is fundamental that you identify what type of IP right may be applicable for your organization compared to what IP you may already have and the business needs you have today. It is advised that you seek professional support from an IP expert prior to investment. 

See the CIPO IP in Canada as a reference guide. Understanding coverage, scope, rights, duration, and disclosure grace period may vary by jurisdiction.

Top considerations at this stage:

Next: Let’s discuss which IP rights may add the most value to your organization.

Validate business justification

Before proceeding: do you have business justifications for relying on and investing in securing IP rights?

Step 3: Consider and define your business needs

Make efforts to understand the business value and financial considerations related to securing or extending IP protection during the execution of the IP strategy. It is crucial to understand the additional value having IP protection will provide you, both in the short term and long term, that the IP rights identified as necessary have business justification, and that such justification is evident in the final IP strategy.

Top considerations at this stage:

Next: Let’s discuss geographic considerations. 

Validate jurisdictional needs

Before proceeding: have you considered IP rights from an international perspective?

Step 4: Understand international needs by jurisdiction

Be sure to consider the market in which you intend to grow. The following questions will help you identify the markets to prioritize. However, it is prudent to consult with a local lawyer, advisor, or consultant who can provide market-specific advice related to the laws and regulations for each type of IP right that you are considering, as well as any current rights.

  1. In which countries do you do business, and what registered and unregistered IP rights do you already have that can be extended to other countries?
  2. In what countries do you plan to do business in the future, and do new IP rights need to be individually secured in those jurisdictions? Will IP rights vary by the work done in that market (component manufacturing vs sales vs other business aspects)?
  3. How will cost and effort factor into expansion plans, and will you be able to allocate additional resources to protect this investment?

Top considerations at this stage:

Registering your IP can create significant business advantages. Do not hesitate to seek professional advice. The Trade Commissioner Service can help you identify a suitable lawyer, advisor or consultant.

View various guides on how to file IP in specific foreign markets:

Remember:

Next: Let’s discuss competitive environment considerations. 

Sector specific considerations

Before proceeding: have you understood external market or competitive positioning that will influence or shape your IP strategy in the international context?

Step 5: Identify sector-specific considerations

It is critical to understand sector-specific or competitor-specific approaches to IP rights when building your IP strategy.  We recommend conducting a landscape analysis (Step 6) to ensure that any IP investment provides the desired understanding of the IP based risks and opportunities associated with your business expansion.

Top considerations at this stage:

Next: Let’s discuss IP landscaping in greater detail because landscaping is a critical component of most robust IP strategies (typically for patents, but can be used for other forms of IP as well).

Analytics and insight generation

Before proceeding: you need to match the tool to your resource and intelligence needs.

Step 6: IP analytics & insights

High-quality landscape analysis can help you make informed business and IP-scope decisions and maximize the value of your IP investment.  Any robust IP strategy will consider competitive data and prior art (patents) as looked at from an IP perspective.

There are two different types of tools: Databases and analysis tools.  The skill level to access and use these tools varies, as does the cost.  Additionally, jurisdictional-specific searches are highly recommended if you have identified specific geographies for priority.

Top considerations at this stage:

Search in IP Databases

There is a wealth of free strategic and competitive information available in IP databases around the world.

Search international IP databases in the markets you are interested in developing to:

To find a national IP office in your target market, visit the Directory of Intellectual Property Offices.

It is advisable to conduct trademark and patent searches before commercializing products and services, which may conflict with the IP rights owned by others in the marketplace. This type of search is called "freedom to operate."

WIPO provides access to global collections of searchable IP data. WIPO databases are comprised of a significant IP collection from many countries. However, be advised that they do not contain complete worldwide IP information.

CIPO provides search help for:

Next: Let’s discuss IP Standards.

IP management and technical standards

Before proceeding: have you identified which standards may influence your IP strategy and export needs?

Step 7: Consider standard essential patents and IP management standards

There are IP-related standards that should be considered and can be leveraged as best practices. 

Top considerations at this stage:

Next: Let’s consider the way forward.

Plan and iterate

Engage external advisors with the following information complied and prioritized:

  1. Business offer needing protected
  2. List of IP assets to be created or relied on and articulation of the value IP needed to provide your organization.
  3. Business justification for resource (cost, talent) to be relied on.
  4. Understanding of international IP rights, and options available for the export needs.
  5. Understand sector-specific IP trends.
  6. Ready to use IP analytics to create business-relevant insights.
  7. Identification of which IP standards and best practices should be included in the strategy.

Before proceeding with the strategy creation: Do any of steps 1 to 7 need reviewing and revising based on insights generated during the IP strategy creation?

Step 8: Planning: Iterate and reflect

Building an IP strategy is iterative and must be revisited as your business grows and expands globally.

The key components of an IP Strategy that we have reviewed are:

  1. Consider your Product vs Service mix and impact on the optimal IP approach.
  2. ID your IP Assets and the value IP will provide your organization.
  3. Consider your business needs.
  4. Understand the international context.
  5. Understand sector-specific trends.
  6. Identify and leverage IP analytics to create business-relevant insights.
  7. Consider IP standards for best practices, as well as licensing risks and opportunities.

Top considerations for the strategy at this stage:

Next: Decide on how to best make use of external resource advisors / internal resources, based on top considerations and type of IP protection needed.

Concluding step: Turning a plan into a strategy

Step 9: Concluding step – Turning a plan into a strategy

Develop an IP strategy

By developing an IP strategy linked to your firm's business strategy and export business plan, you will be in a better position to understand how intellectual property can support the achievement of your business goals.

CIPO offers a guide that provides considerations based on your business objectives that will put you on the path to developing a detailed intellectual property (IP) strategy that you can integrate into your business plan. Use the interactive tool developed by CIPO to plan your IP strategy

Find partnership and licensing opportunities

After you have taken steps to protect your product or service, you will want to decide on the best way to market it and generate a profit. There are several options.

For example, with a licence, you grant one or more companies or individuals the right to manufacture and sell your product in exchange for royalties. The licence can apply nationally or to a specific geographic region.

Look for opportunities to sell or buy solutions for your business needs.

For example, ExploreIP is a tool for businesses, creators, entrepreneurs and innovators to discover intellectual property (IP) held by public sector institutions and leverage ground-breaking research and discoveries, stimulating collaborations that could help launch the next big Innovation

Also, the Enterprise Europe Network helps small and medium-sized enterprises (SMEs) make the most of business opportunities in the European Union (EU) and beyond.

Prevent / Remedy infringement

In general, the use of IP by any unlicensed party is considered infringement. With awareness and proper strategic planning, infringement can often be avoided. It is the owner's responsibility to stop unauthorized use. If a conflict arises, attempt to reach a negotiated settlement, especially in foreign jurisdictions.

2. How do I get support on IP?

Government financing programs

Who can help me?

In Canada

Intellectual Property Institute of Canada (IPIC)

Innovation Asset Collective (IAC)

Canadian Intellectual Property Office (CIPO)

Innovation Canada

Abroad

CIPO provides a list of international IP offices where you can find a lot of valuable information on how to register in your targeted market.

3. Why protect my IP abroad?

Patent protection abroad

If you seek patent protection in other countries, know that there is no such thing as a “worldwide patent.” A Canadian patent provides protection only within Canada. To obtain similar protection in other countries, you generally have two choices:

  1. Make a separate patent application in each country. This can be cost-effective when you only want protection in a few countries.
  2. File a single international application under the Patent Cooperation Treaty (PCT) that is administered by the World Intellectual Property Organization (WIPO)

The PCT is a streamlined way of applying for a patent in many countries simultaneously, including Canada. You can file a single international application with the same effect as filing a separate application in each country involved in the treaty.

CIPO can help you with your PCT applications.

Trademark protection abroad

When applying for overseas trademark protection, you have two choices:

  1. Apply separately in each country.
  2. Apply under the Madrid System.

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 124 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Applications for an International Registration under the Madrid System can be filed through the WIPO Madrid e-Filing service, accessed through CIPO’s online services.

Where a country is not a member of the Madrid System, an application for trademark registration must be filed with that country directly.

Industrial design protection abroad

In most cases, design applications will have to be filed in your country of interest directly. There are some differences in the legal requirements and terms of protection for designs around the world. We recommend that you seek advice from an IP professional before you file abroad. In some countries, unregistered designs can be protected without the need for registration.

The Hague Agreement provides a mechanism for acquiring, maintaining and managing design rights in member countries and intergovernmental organizations through a single international application filed with the International Bureau of the World Intellectual Property Organization (WIPO). There are multiple countries and regional associations in the Hague Agreement, including most of Canada's major trading partners, such as the United States, the European Union, South Korea and Japan.

Membership in the Hague Agreement provides key benefits for business:

Copyright protection abroad

Many countries extend copyright protection automatically to original literary, artistic, dramatic or musical works created in Canada.

4. Get professional advice

Ask for IP advice from a registered IP professional as early as possible. IP professionals include registered patent or trademark agents or IP lawyers.

While some agents and lawyers help you to file your IP application, others can offer strategic advice about developing effective IP exploitation strategies for your business. These IP experts can advise when and how to apply for IP protection and how to save money by avoiding common IP pitfalls made by exporters.

The Intellectual Property Institute of Canada (IPIC) is the representative body for patent and trademark agents and lawyers concerned with intellectual property issues and provides a Find an IP professional service on their website.

CIPO manages a list of registered Canadian patent agents and trademark agents qualified and entitled to act on your behalf with the Canadian Intellectual Property Office. Many of them have associate firms in foreign countries.

Use an IP agent search to find a registered trademark agent or a patent agent based on specific search criteria.

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