IP beyond our borders
Businesses increasingly operate in a global marketplace, selling their products and services, or licensing and franchising their intellectual property (IP) rights beyond their national borders.
IP is a valuable asset that can enhance your competitive advantage by:
- Preventing competitors from using and selling your product or service
- Improving your financial performance and increasing the value and profitability of your business
- Supporting your business expansion abroad
As IP is only protected within national borders, you should consider seeking IP protection in the country in which you wish to operate. International agreements have been created to facilitate and harmonize processes for registering your IP in multiple jurisdictions.
It is important to consider your IP protection in accordance with your identified markets, business goals and resources.
International IP protection
There are a number of international organizations that exist to facilitate the use of the IP system in an effective way.
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) administers a balanced and accessible international IP system to simplify the process for seeking IP protection internationally. The international filing systems reduce your costs for obtaining international protection.
World Trade Organization and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
The World Trade Organization (WTO) established in 1995, oversees the rules governing trade between its 164 members in order to increase economic growth and social prosperity.
The WTO introduced intellectual property rules into the multilateral trading system: The TRIPS specify. TRIPS specify enforcement procedures, remedies, and dispute resolution on IP rights protection around the world.
The agreement covers five broad issues:
- how basic principles of the trading system and other international intellectual property agreements should be applied
- how to give adequate protection to intellectual property rights
- how countries should enforce those rights adequately in their own territories
- how to settle disputes on intellectual property between members of the WTO
- special transitional arrangements during the period when the new system is being introduced
How to register your IP internationally
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 must also be sought in targeted markets. Navigate through steps one to eight to learn more about IP for Exporting Businesses.
Resources on IP registration or application abroad:
- Patent Cooperation Treaty (PCT) e-Filing
- PCT forms
- Patent Prosecution Highway (PPH) Pilot Program
- Trademark registration outside Canada
- Industrial Design registration outside Canada
Intellectual Property for Exporting Businesses
Registering intellectual property in Canada provides protection only in Canada. Similar protection must also be sought in targeted export markets.
Businesses should take steps to protect their intellectual property (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 must also be sought in targeted markets.
Navigate through steps one to eight to learn more about IP and IP management as you prepare to export.
- Learn the Basics of IP Rules
- Take Stock of your IP Assets
- Develop an IP Strategy
- Search IP Databases
- Formally Protect your IP Rights
- Get Professional Advice
- Prevent / Remedy Infringement
- Find Partnership and Licensing Opportunities
1. Learn the Basics of IP Rules
Learn the basics of IP rules and laws where your business is based and in the major countries in which you intend to do business. IP knowledge about your target markets can help you save time and money.
The World Intellectual Property Organization (WIPO) offers useful resources specifically for businesses:
- Resources for Businesses: Information for the business-users of intellectual property
- IP Panorama (Module 09 – IP and International Trade): Learning modules on IP issues from a business perspective
- Secrets of Intellectual Property: A guide for small and medium-sized exporters
2. Take Stock of your IP Assets
Don't make assumptions — get clear on the IP assets you actually hold. Build an inventory of your IP assets to include in your business plan. IP rights can provide a foundation for mergers, licensing, and joint ventures or for research and development agreements.
- To determine the types of IP rights your business may need to protect, visit the U.S. Government's Stopfakes.gov web site. On the left navigation, under SME IPR Training Tutorial select the language of your choice. Then under Module 2 – IP Protection and Your Business – select Does your Business Need IP Protection? to complete a one-page needs assessment.
- The Australian government's IP Toolbox contains information on IP concepts and issues. The Toolbox also provides information on IP Audits.
- WIPO provides an example of how to conduct an IP audit.
- The European Commission operates the China IPR SME Helpdesk that offers a multitude of information for businesses, including information on IP Audits.
3. 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.
- The Danish Patent and Trademark Office offers an IP Response assessment tool to assist you in gaining insights on IP strategies, processes and sharing of responsibility for knowledge assets.
- IP Australia provides information on taking your IP global. Read more on Approaching a global market.
- IP Healthcheck is a free online tool from the United Kingdom IP Office that will help you know how to protect and exploit your intellectual assets.
4. Search IP Databases
There is a wealth of free strategic and competitive information available in IP databases around the world.
Search 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
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 world-wide IP information.
CIPO provides search help for:
5. Formally Protect your IP Rights
IP Registration can create very important and timely business advantages. Do not hesitate to seek professional advice.
View various guides on how to file in the United States:
- Tutorial – your patent application (CIPO): To guide you in filing a Canadian patent application
- A Guide to Filing a Utility Patent Application (USPTO)
- Trademark Process (USPTO)
- Design Patent Application Guide (USPTO)
- Copyright Basics (U.S. Copyright Office): Basic information about registration, fees, compulsory licences, and other aspects of the copyright process
- You must register your 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.
- List of International IP Offices
6. 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 offer advice on when and how to apply for IP protection and how to save money by avoiding common IP pitfalls made by exporters.
- The Department of Foreign Affairs and International Trade offers a Step-by-Step Guide to Exporting to help you learn about how your company can do business in foreign markets.
- The Trade Commissioner in the export market of interest can provide you with a contact list of qualified IP professionals.
- The CIPO manages a list of registered IP agents for patents and trademarks in Canada. Many of them have associate firms in foreign countries.
7. Prevent / Remedy Infringement
In general, 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 conflict arises, attempt to reach a negotiated settlement, especially in foreign jurisdictions.
- The Transatlantic IPR Resource Portal developed by the U.S. Department of Commerce and the European Commission's Directorate General (DG) for Enterprise and Industry has made it easier for transatlantic businesses to find and use resources to protect and enforce IP rights. The portal includes toolkits on 18 countries and the European Union.
- IP Australia has a section that is designed to introduce basic IP concepts to businesses. It also provides IP Infringement information.
8. Find Partnership and Licensing Opportunities
After you've taken steps to protect your product or service, you'll want to decide on the best way to market it and to generate a profit. There are a number of 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.
- The Enterprise Canada Network (ECN) is an industry-led single window platform that connects Canadian small businesses and researchers to qualified global opportunities, facilitates international partnerships and creates trade through access to public and private sector resources.
- The Enterprise Europe Network helps small and medium-sized enterprises (SMEs) make the most of business opportunities in the European Union (EU) and beyond.
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