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.
- Step 1: Consider your offer (Product or service variations)
- Step 2: Identify your current IP assets and what IP rights offer the most value
- Step 3: Consider and define your business needs
- Step 4: Understand international needs by jurisdiction
- Step 5: Identify sector-specific considerations
- Step 6: IP analytics & insights
- Step 7: Consider standard essential patents and IP management standards
- Step 8: Planning: Iterate and reflect
- Step 9: Concluding step – Turning a plan into a strategy
Understand the business offer
- Define the offer that needs to be protected
- Use the Canadian Intellectual Property Office (CIPO) IP checklist to cross-reference the IP rights to consider.
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:
- Is the offer you are looking to protect a service?
- If yes – consider prioritizing trademark, trade secret, and possibly copyright.
- If the technology you are looking to protect is product-based, is it a technical component of a larger product, or is it an end-user product?
- If it is a technical component, consider prioritizing patent, trade secret & industrial design.
- If it is an end-user product, consider all types of protection, such as branding (trademarks), packaging (industrial design, trademarks), software (copyright, patent, industrial design), etc.
- If data, software, literature, or other forms of work are part of your business end product or service, then the copyright and data ownership needs considering so you can understand what ownership and usage rights are available or if restrictions exist.
Top considerations at this stage:
- Consider all aspects of your product or service and the IP protection that is most valuable.
- Begin considering the geographies where you intend to manufacture or sell (important in subsequent steps)
- Desired output at this stage: List of IP protection that is relevant for the business.
Next: Let’s discuss the business need as it relates to the value in your organization.
Discover IP rights and type
- List existing IP to rely on, and investigate if it may be relied on.
- List new IP that is needed, and investigate what is an option to secure.
- Discuss the business value and impact for the IP forms will match the effort and resources to proceed
- IP forms include patents, copyright, trademark, trade secret, and industrial design rights. Define the export or offer that needs to be protected
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.
- What forms of registered and unregistered IP can you currently rely on (patents, trademarks, industrial design, copyright, trade secrets)?
- Based on your technology, product, or service offer, what are you looking to protect and is there a match to your existing IP, or is new IP protection required?
- Based on your business needs, what technology, product, or market are you looking to protect, and what new IP protection required?
- Considering the IP rights definitions from CIPO and business value by IP type, what IP type(s) would you like to focus on that best suits your business?
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:
- Existing registered and unregistered IP (patents, trademarks, industrial design, copyright, trade secrets) may be considered for expansion to new markets. This may require legal support in the new jurisdiction to understand rights and options based on existing registrations.
- Consider that any IP strategy (effort and cost) should be supported by a business justification for expansion into a new market.
- There are multiple types of IP protection available, and a full IP strategy will have unique aspects that will vary by the combination of IP rights and jurisdiction.
- Desired output(s): List of IP protection that is relevant for the business, updated based on an understanding of the IP rights, duration, and other business drivers.
Next: Let’s discuss which IP rights may add the most value to your organization.
Validate business justification
- Review each IP form (patents, copyright, trademark, trade secret, and industrial design rights) and think about the resources (financial, talent) and needs for each.
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.
- How does IP protection support your overall business plan?
- What value are you looking to gain from your IP investments?
- Pursing IP protection (including pursuing new IP or expanding existing IP) requires investment. Can you allocate an appropriate budget for IP protection?
- Business planning is essential because patents, trademarks, and industrial designs may be the most costly form of IP to register and maintain and require investments by jurisdiction. The value to protect must be at minimum equal to the effort needed over the life of the business and IP right. Considering the budget you can allocate and the business value you want to generate, does this change your desired IP rights (or is it appropriate to consider other or multiple overlapping forms of IP)?
- Can you consider relying on another organization’s IP as part of your strategy through licensing, joint ventures, or other contractual relationships? Do you have a technology or service that requires specific IP indemnifications from partners or suppliers as part of your strategy?
Top considerations at this stage:
- Overall, consider that any effort and cost to deliver an IP strategy should support the business justification for expansion into a new jurisdiction.
- You may need to allocate a budget for IP costs as part of your expansion budget. Patents and trademarks will be the most expensive part of the strategy execution, requiring external legal support in the new jurisdiction. Trade secrets require lower cost but may need an increased internal review of expansion plans and efforts in order to ensure that protections are maintained.
- Expanding a business in new markets may require you to rely on others (business partner, joint venture partner, manufacturers, etc.). Consider not only your IP strategy but how or if your overall business position, which includes your suppliers and partners, may be protected.
- Desired output(s): Understand the business justifications related to IP effort and cost that are required to execute on an IP strategy, considering your present and future needs.
Next: Let’s discuss geographic considerations.
Validate jurisdictional needs
- Review IP protection by jurisdiction, and investigate jurisdictional limits and options.
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.
- 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?
- 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)?
- 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:
- Your business plan and plans to expand into different jurisdictions either for manufacturing, selling, or other business ventures. Any investment in IP should support the business justification for expansion into the new jurisdiction.
- While a detailed business strategy for international growth can be set over time, IP rights for registered rights may need to be secured in advance.
- Depending on the markets you identified for prioritization, there can be unique costs by jurisdiction to consider.
- Depending on the markets you identified as a priority, consider the IP rights by jurisdiction based on legal structures and external influences such as registration of rights, enforceability, and longevity of rights. Do not assume your patent or trademark strategy will apply equally by jurisdiction.
- Desired output(s): Understand IP options available in the jurisdictions previously identified, and consider the options for present and/or future business value.
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:
- How to protect IP in the US
- How to protect IP in China
- How to protect IP in the EU
- How to protect IP in India
- How to protect IP in Mexico
- How to protect IP in Japan
- How to protect IP in Brazil
- How to protect IP in Australia
- You must register your IP rights in the countries to which you plan to export. For patents, there is an international system that can help you apply in more than one country at a time: PCT – The International Patent System
- Properly mark your business products and packaging. Marking requirements should be considered for each country where your products will be sold.
Next: Let’s discuss competitive environment considerations.
Sector specific considerations
- List the market and competitive sectors that relate to your export needs.
- Assess the competitive risks / market opportunities that IP could support if IP rights were secured.
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.
- When you look at your top market competitors, what type of IP coverage do these key competitors have?
- What technology or services are your competitors protecting?
- Considering your technology or service, what IP competitors exist in your space (these may or may not also be your market competitors)?
- What market intelligence that references IP do you have today that can you draw on?
- What are the internal skillsets and overall landscape budget you have to rely on to build a custom IP landscape as a foundation of your IP strategy?
Top considerations at this stage:
- It is critical to understand your competitive landscape to ensure you maximize the value of your IP investment by understanding the specific competitive IP risks and opportunities.
- Your competitor’s approach may be considered as a benchmark for the sector.
- Landscaping is especially critical when considering a patent investment.
- A variety of resources is available to support landscape analysis, with varying degrees of cost and effort. The cost and effort applied to the landscape analysis will often dictate the depth and quality of intelligence outputs, which in turn will define how detailed a formal IP strategy can be developed for your business.
- Desired output(s): Understanding of sector, market, or competitive IP positions that will shape or influence a client’s strategy.
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
- Consider the importance of the IP intelligence in development of an IP strategy.
- Think about the resources (budget, talent) available.
- Look at general types of tools:
- Free databases, free intelligence reports
- Paid tool or database access
- Customized reports or outputs
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.
- What budget do you have available for landscaping?
- What amount of time can you dedicate to landscaping?
- What level of expertise do you have available in-house for landscaping?
- Do the resources (cost, talent) match the output the tool will offer, and if not, what needs adjusting?
Top considerations at this stage:
- Pick an IP landscaping approach based on budget, need, etc., but recognize IP landscaping creates the IP market intelligence that is critical for a robust IP strategy.
- For many companies, resources (budget and talent) dictate the depth of work that can be done.
- Consider the tools available and determine the best approach depending on the type and depth of your IP strategy.
- Consider enlisting a professional to support your landscaping needs.
- Build insights from the analytics you compile that can inform your IP approach and investment.
- For copyright, if your business considers “data” as part of their IP or business, the importance of considering landscaping is “high” because data ownership needs to be considered and mapped out, so you can understand what data ownership and usage rights are available, or restrictions exist.
- Desired output(s): understand which tool or analysis method is best for their business.
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:
- identify potential competitors
- find possible partners and markets
- anticipate changes in the marketplace
- avoid possible infringement
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
- Consider the two types of standards that intersect with IP: management (guidance) and technical standards.
- All companies should consider reviewing the guidance standard.
- Companies exporting where technical standards are in place should consider Standard Essential Patent (SEP) risks and opportunities.
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.
- Based on the geography you intend to target, do IP standards exist that must be considered?
- Have you considered IP and Innovation management guidance standards to help discover and implement best practices in your organization related to Innovation and IP?
- Do you have technical standards that apply to your products (typically reserved for technical innovations or products), and have you considered if this will trigger any license payment requirements?
Top considerations at this stage:
- Technical standards may apply to the jurisdiction in question.
- Adherence to some technical standards may result in an organization owing royalties or licence fees to organizations that own “Standard Essential Patents.”
- IP Management guidance standards can support expansion strategy planning.
- Consider if the following global standards can be leverages for best practices related to Innovation:
- ISO 56005:2020 – Innovation management – Tools and methods for intellectual property management.
- ISO 56002:2019 – Innovation management – Innovation management system.
- Desired output(s): Decide if any IP standards (technical or management) will be used in the IP strategy creation.
Next: Let’s consider the way forward.
Plan and iterate
Engage external advisors with the following information complied and prioritized:
- Business offer needing protected
- List of IP assets to be created or relied on and articulation of the value IP needed to provide your organization.
- Business justification for resource (cost, talent) to be relied on.
- Understanding of international IP rights, and options available for the export needs.
- Understand sector-specific IP trends.
- Ready to use IP analytics to create business-relevant insights.
- 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:
- Consider your Product vs Service mix and impact on the optimal IP approach.
- ID your IP Assets and the value IP will provide your organization.
- Consider your business needs.
- Understand the international context.
- Understand sector-specific trends.
- Identify and leverage IP analytics to create business-relevant insights.
- Consider IP standards for best practices, as well as licensing risks and opportunities.
Top considerations for the strategy at this stage:
- Consider any gaps or different information gathering needed.
- Further, refine and expand the components to ensure the IP strategy does not conflict with the business strategy.
- Get very clear on the value of IP for your business.
- Consider external support that can be leveraged, including your local jurisdictional experts or geographic-specific IP intelligence or landscape analysis expertise.
- If the strategy includes patents, be prepared for high cost and high effort to ensure your investment and filing bring optimal impact.
- Every strategy is different. The key to developing a sound IP strategy is to understand the considerations to prioritize based on the IP type you will pursue and your business’s realities.
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
- Compile and prioritize information and intelligence
- Apply the information and intelligence into the business plans
- Plan to meet with geographic specific advisors
- Plan for refinement based on competitive or ecosystem needs
Step 9: Concluding step – Turning a plan into a strategy
- For each type of IP, prioritize the top considerations in developing your IP strategy. This includes understanding the overall effort (time and cost) to execute a robust IP strategy.
- For each type of IP, following steps 1to 7, compile the relevant information and intelligence needed to work with local advisors or experts on the relevant portions of either extending your current IP strategy to the new geography or creating and executing a new strategy in the new geography.
- Consider specific strategies for each type of IP that may be created and deployed.
- As a business expands its geographical reach or market position, or the competitive ecosystem changes, the corporate and IP strategy must be refined to match changes.
- Engage local advisors or experts to assist in the creation or review of the 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?
Intellectual Property Institute of Canada (IPIC)
Innovation Asset Collective (IAC)
Canadian Intellectual Property Office (CIPO)
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:
- Make a separate patent application in each country. This can be cost-effective when you only want protection in a few countries.
- 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:
- Apply separately in each country.
- 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:
- One application, one payment, one currency and one place
- Simpler rights maintenance and management
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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