These are my slides for my presentation to ASAE: The Center for Association Leadership on key considerations companies need to keep in mind when going global with their intellectual property.

1. Going
Global:
What
Businesses
Need
to
Know
About
Intellectual
Property
Laws
Abroad
Lorraine
M.
Fleck
ASAE:
The
Center
for
Associa9on
Leadership
Key
Global
Associa9ons
CommiAee
(KGAC)
Toronto,
Canada
June
29,
2012
These
slides
do
not
cons9tute
legal
advice.

2. Overview
1. You’re
not
in
Kansas
anymore…
2. Timing
is
everything.
3. An
ounce
of
preven9on
is
worth
a
pound
of
cure.
4. Keep
an
eye
on
the
situa9on.
5. Specific
issues
in
Brazil,
China,
India.

3.
You’re
Not
in
Kansas
Anymore…

4. You’re
Not
in
Kansas
Anymore…
§ Laws
abroad
can
differ
significantly
from
those
at
home.
§ Examples:
a. What
is
considered
trade-­‐mark
“use”
in
one
country
may
differ
from
another.
b. If
you
start
li9ga9on
in
another
country,
and
lose,
you
may
have
to
pay
part
of
the
winner’s
legal
fees.
c. The
cost
of
li9ga9on
may
not
deter
infringers.

5. You’re
Not
in
Kansas
Anymore…
Tips
§ Retain
experienced
counsel.
If
you
have
a
trusted
legal
referral
network,
use
it.
§ Make
sure
you
find
out
as
much
as
you
can
about
foreign
processes
before
filing
applica9ons/commencing
li9ga9on.

6.
Timing
is
Everything

7. Timing
is
Everything
§ Many
types
of
IP
are
“first
to
file”.
§ Disclosure
may
bar
the
filing
of
applica9ons
e.g.
patents.
§ In
some
countries,
your
business
may
be
able
to
file
trade-­‐mark
applica9ons
before
using
a
mark
–
may
prevent
“brand
jacking”.
§ The
“priority
rule”
may
allow
your
company
to
spread
its
legal
spend
over
9me.

8. Timing
Is
Everything
Tips
§ For
patents
–
file
before
disclosure
unless
only
applying
in
Canada
and
USA.
Otherwise
cannot
file
applica9ons.
§ For
trade-­‐marks
–
file
“proposed
use”
applica9ons
before
entering
markets.
§ Register
domain
names
ASAP.
§ Copyright
registra9ons
recommended
in
advance
of
li9ga9on.

9.
An
Ounce
of
PrevenGon
is
Worth
a
Pound
of
Cure

10. An
Ounce
of
PrevenGon
is
Worth
a
Pound
of
Cure
§ Failure
to
ensure
your
company
can
use
the
IP
it
wants
can
cause
legal
and
PR
nightmares.
§ Legal
consequences
include
import
bans,
aAorney
fees
(yours
and
perhaps
the
other
side’s).
§ PR
consequences
can
include
uninten9onally
nonsensical
or
crude
trade-­‐marks.

11. An
Ounce
of
PrevenGon
is
Worth
a
Pound
of
Cure
Tips
§ Obtain
clearance
searches
and
opinions
before
selling
into
new
markets
and
filing
any
recommended
applica9ons.
§ Determine
whether
your
business’
trade-­‐marks
have
any
meaning
in
local
language,
and
if
so,
what
is
the
meaning?

12.
Keep
an
Eye
on
the
SituaGon

13. Keep
an
Eye
on
the
SituaGon
§ Unauthorized
IP
users
can
be
external
or
internal.
§ External
e.g.
compe9tors.
§ Internal
e.g.
licensees,
manufacturers,
other
business
partners.

14. Keep
an
Eye
on
the
SituaGon
Tips
§ External:
Make
sure
others
are
not
ripping
you
off
(e.g.
industry/trade-­‐mark
watching,
Google
alerts,
local
agents).
§ Internal:
inspec9ons
of
licensees
(good
agreements
are
key!),
royalty
audits.

15.
Specific
Issues
in
Brazil,
China,
India

16. Specific
Issues
in
Brazil,
China,
India
Brazil
§ TM
license
agreements
must
be
recorded
with
the
Brazilian
Patent
and
Trademark
Office
for
royal9es
to
be
legally
remiAed
outside
of
Brazil.
Available
only
for
registra9ons,
not
applica9ons.
§ No
discovery
–
ini9al
pe99on
must
include
all
evidence.

17. Specific
Issues
in
Brazil,
China,
India
Brazil
§ Copyright
registra9ons
highly
recommended
before
commencing
li9ga9on.
§ Huge
patent
backlog
–
8
–
10
years
for
applica9ons
to
be
decided.

18. Specific
Issues
in
Brazil,
China,
India
China
§ There
is
no
China
wide
IP
protec9on;
SARs
(Hong
Kong,
Taiwan,
Macau)
are
separate
from
Mainland
China.
§ Where
you
sue
in
mainland
China
can
make
a
difference;
legal
system
is
not
uniform.
§ Protec9onism
is
very
much
alive,
according
to
some.

19. Specific
Issues
in
Brazil,
China,
India
China
§ Obtaining
a
patent
can
be
very
difficult
e.g.
the
specifica9on
(descrip9on
of
the
inven9on)
must
closely
match
the
claims.
So,
if
your
company
intends
to
file
in
China,
the
patent
must
be
draned
accordingly.
§ If
you
can
obtain
a
patent
in
mainland
China,
it
is
rela9vely
easy
to
obtain
a
Hong
Kong
patent
based
on
the
mainland
patent.

20. Specific
Issues
in
Brazil,
China,
India
India
§ Where
a
trade-­‐mark
applica9on
is
filed
can
make
a
difference
in
how
quickly
the
registra9on
is
granted.
So,
file
accordingly
depending
on
your
launch
date
in
India.
§ Li9ga9on
is
very
inexpensive
in
India
and
legal
costs
are
low.
So,
infringers
are
not
wary
of
li9ga9on.

21.
QuesGons?

22. Acknowledgements
Jay
Millman|
Millman
IP
(Toronto,
Canada)
Cris9na
Pinheiro
Palmer
&
Walter
Palmer|
Pinheiro
Palmer
Advogados
(Rio
de
Janeiro,
Brazil)
Dr.
Mohan
Dewan
|
R.K.
Dewan
&
Co.
(Mumbai
&
Pune,
India)

23. Thank
you
Lorraine
M.
Fleck
Barrister
&
Solicitor
|
Trade-­‐mark
Agent
E-­‐mail
|
lfleck@hofferadler.com
Website
|
www.hofferadler.com
Blog
|
www.ipaddressblog.com
|@
HofferAdler
@lorrainefleck

24. Going
Global:
What
Businesses
Need
to
Know
About
Intellectual
Property
Laws
Abroad
Lorraine
M.
Fleck
ASAE:
The
Center
for
Associa9on
Leadership
Key
Global
Associa9ons
CommiAee
(KGAC)
Toronto,
Canada
June
29,
2012
These
slides
do
not
cons9tute
legal
advice.