Tuesday, February 07, 2006

Helping Your Clients Protect Their Intellectual Property

I attended a web conference a couple weeks ago, offered by the US Department of Commerce, about how foreign entities have intruded on property rights of American businesses. They have enlisted the SBDCs to get out the word.

According to the presentation, counterfeiting accounts for 5% -7% of global merchandise trade, with lost sales of $600 billion in 2005. Small businesses are especially vulnerable because they:
-Lack other product lines to fall back on
-Lack financial resources
-Have liability hazards

Intellectual Property Rights (IPR) are Private Rights:
-Legal protection for an investment
-Protection provided under national legislation and international agreements
-They include patents, trademark, and copyright
-For more information about patents and trademarks go USPTO or call 800 786-9199
-For more information about copyright, go the copyright Office or call 202 707-3000

The Department of Commerce recommends that SBDC advisers discuss IPR with your clients prior to new product development, and certainly prior to exportation. Whether to obtain IP protection is a business decision. Specifically, how important is IP to your client's business model? Can their goods or services be copied or imitated? How could counterfeiting, piracy, or infringement affect their business?
Since IP rights are territorial, the client should consider IP in countries where companies wish to produce, sell, or market their products now and in the future.

What is the IP climate of the countries where you intend to do business? Go here for more info on that, specifically the Special 301 Report and the National Trade Estimate.

To help your clients obtain IPR protection abroad, encourage them to register in current and potential markets here. There is some protection for international registration: Madrid Protocol for trademarks and The Patent Cooperation Treaty, for instance.

A key resources is www.stopfakes.gov, which has special toolkits for dealing with China, Korea, Taiwan, Mexico, and Russia.

While the Department of Commerce wants to help your clients enforce their IPR abroad, the right holder has ultimate responsibility. Commerce can only provide guidance. Your clients should go to www.export.gov/ call 1-866-999-HALT. IP experts can suggest strategies to evaluate IPR problems.

Specifically in dealing with China, follow the 3 R’s: Register, Record, Remedies. The US Government can help companies navigate through China’s legal system:
-provide list of attorneys and/or consulting firms
-monitor and inquire about case status
-help your clients enforce their IPR in China through a one-hour consultation:
e-mailphone: 202-662-1034
a href="http://www.export-legal-assistance.org/" target=_new>ELAN website

Other Steps to Consider
-Work with legal counsel to develop an overall IPR protection strategy
-Develop detailed IPR language for licensing and subcontracting contracts
-Conduct due diligence of potential foreign partners

Resources to Assist Your Clients
Trade Compliance Center/ Office of IPR: Ensuring companies benefit from U.S. trade agreements
Their objectives are to:
Ensure that foreign countries comply with their trade commitments
Help American firms facing foreign trade barriers and unfair trade practices
Inform American firms about their rights
Helping Companies Fight Back, Case by Case
Identify unfair treatment
Form a compliance team
Apply agreement analysis
Craft an action plan
Work with other government agencies and our embassies if necessary
Raise the issue with appropriate authorities to resolve the problem.
Go here

For more information, including finding out when there may be a conference in your area, contact Cassie Peters
International Trade Specialist
Intellectual Property Rights
Market Access and Compliance
U.S. Department of Commerce
(202) 482-6276

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