There can be little doubting the impact of globalisation on small businesses all around the world. From Chinese machine parts manufacturers to US biotech companies, international expansion is on the agenda of many twenty-first century businesses. But, businesses must be sure not to overlook the need to protect their IP overseas, particularly when doing business in high-growth markets.
Early on in the internationalisation planning processes, companies should consider where to protect their products and/or services. IP rights are generally territorially limited, meaning, for example, that UK patent extends to the UK, but not beyond. Planning ahead can avoid falling fowl of local IP regulations.
The ultimate decision on where to seek protection needs careful forethought, as filing for trade mark, patent or other IP protection in all territories you are expanding into may not prove practicable or cost-effective. One common approach to patenting, for example, is to concentrate only on the main territories of interest, and possibly also on the locations where known competitors operate (in countries where suitable manufacturing facilities are known to operate, etc.). In certain industries, the global manufacturing capability and logistics chain will clearly determine certain countries where businesses should protect their IP.
When trade marking businesses often focus on where they are planning to export to and manufacture their goods. The last thing a business wants is to build up a brand in their home market, only to find that someone else owns the trade mark for the same brand in one of their key export markets.
Not only does protection need to be considered in key countries, but the mode of the export can also require advance IP planning. Most businesses will use a local distributor, or at least a distributor with local knowledge, in order to get the product onto the market, which might involve manufacture of your goods. Contracts need to be checked and double-checked, confirming conditions of confidentiality in relation to know how and developments, and also could set out the ownership requirements of any such developments. No business wants to inadvertently lose ownership of developments made to the product by an overseas contact.
With offices on four continents, our patent and trade mark attorneys and IP solicitors know what international expansion feels like and realise the risks and rewards associated with it. Every day, we advise many small businesses looking to expand abroad on how to make IP protection work for them. We understand local markets around the world we’re situated in and have a trusted network of associate firms in all other territories, able to provide insight into IP protection in those markets.