The business decision to enter foreign markets and export goods and services abroad is not without risks and challenges: exporting involves a considerable investment of financial, managerial, and production resources. Therefore, it requires careful planning and execution.
Companies generally need to make an assessment as to whether they are ready to embark on export operations and whether their product is indeed exportable. In assessing whether it has an exportable product, companies should consider various factors such as modification, license to export, compliance with norms or standards, after‐sale support, and reasonable export price, etc.
- Importance of IPR for Exporters:
- Exclusivity;
- Stop imitators;
- Avoid infringing upon other’s IP rights ;
- Access new markets through licensing, franchising, joint ventures, etc.;
- Protection of adaptation;
- Negotiation with distributors, importers or other partners;
- Marketing of the product;
- Timing of participation in fairs and exhibitions;
- Pricing of the product; and
- Fund-raising, etc.
- IP Mistakes commonly made by Exporters:
- Believing that IP protection is universal;
- Assuming that laws and procedures for the protection of IP rights are the same worldwide;
- Not using the regional or international protection systems;
- Missing important deadlines for filing applications abroad;
- Disclosing information too early or without a confidentiality or non‐disclosure agreement;
- Not checking whether a trademark is already registered or is being used by competitors in the export market;
- Exporting licensed products without authorization from the licensor;
- Not defining issues of ownership of IP rights when outsourcing manufacturing;
- Seeking to license a product in a market where the relevant patent, design or trademark is not protected; and
- Using a trademark that is inappropriate for the market in question, etc.
- Freedom to Operate:
The first step to take when exporting is to ensure that your product will not be infringing on the IP rights of others in the export market. This type of analysis is called a “freedom to operate” analysis and, depending on the product in question, may consist of a basic trademark search or a thorough investigation involving various IP rights. Some of the common features of a freedom to operate analysis would include the following:
- Trademark Search; and
- Patent Search, if your search uncovers patents that protect technology that is incorporated in your product, you have the following options: Purchasing or licensing the patent; Inventing around; Cross-licensing; and Patent pools.
- To protect IPRs in Export Market:
The procedures for obtaining IP protection in different countries can vary significantly and it is important to be well‐informed about the national procedures and legislation at each stage of the application process as well as when seeking to license or enforce IP rights. There are essentially three alternative procedures for applying for IP protection in other countries:
- The National Route;
- The Regional Route (such as EPO, OHIM, ARIPO, OAPI, EAPO, Benelux Trademark Office & Benelux Designs Office, Patent Office of the Cooperation Council for the Arab States of the Gulf); and
- The International Route; WIPO‐administered systems of international protection include three different mechanisms of protection for specific industrial property rights:
- The patent cooperation treaty (PCT);
- The Madrid system; and
- The Hague Agreement.
In conclusion, there are ample reasons to make sure that IP issues are duly taken into consideration while developing your export plan and that companies take sufficient measures a) to ensure that they are not caught off‐guard infringing on the IP rights of others; and b) to limit the opportunities for competitors to free‐ride on their firm’s inventiveness and creativity. A few steps early in the planning process could prove extremely valuable later once export operations begin.
Law School Times 