Global IP Protection: The Best Offense Is A Good Defense

China IP Theft

From the New Yorker

In deleting old emails I came across one from a long time ago that I had written to a Spanish client that had retained my law firm to protect their intellectual property pretty much throughout the world. My email essentially set forth the following:

We should initially consider and discuss the legal options for protecting your IP, including the following:

  • Figuring out in what countries you should register your IP. Very generally, it makes sense to consider those countries in which you are having product made, those countries in which you do business, and those countries into which you sell your product or services. You also should consider the countries in which you are not presently doing these things but are planning to eventually do so.
  • Figuring out IP you have that warrants you spending money to protect.
  • Figuring out how to protect the IP you wish to protect. This will typically involve applying to secure/register a trademark, copyright or patent.
  • Figuring out what contracts make sense for additional or complementary IP protections. These contracts might include licensing agreements, trade secret agreements, NNN Agreements, trade secret agreements, confidentiality agreements, and non-compete agreements.

Equally importantly, we should consider and discuss non-legal means for protecting your IP, including the following:

  • Keep your key technologies and procedures in Spain.
  • Keep your key technologies and procedures confined to as small a group of trusted people as reasonably possible.
  • Design your products so they are difficult to copy.
  • Compartmentalize your production processes so no single entity can produce the complete product.
  • Outsource different parts of your products to different companies to minimize the risk of creating a new competitor.
  • Know who you are hiring everywhere in the world and make your employees sign non-compete and non-disclosure agreements (NDA).
  • Conduct due diligence on all of your potential and current suppliers and distributors. Select partners with reputations of their own to protect and include IP protection clauses in your contracts with them. Your odds of getting your IP stolen by a company with nothing to lose are way higher than by a company with a lot to protect.
  • Monitor the trademarks and patents and copyrights your competitors seek to prevent copycats.
  • Monitor IP violations and take prompt action against them. Your IP rights mean little if you do not protect them.

Getting your legal and operational house in order will obviously not prevent all IP problems, but it is a necessary start.

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