Protecting Your Intellectual Property When Expanding Overseas
A startup’s intellectual property (IP) is
their most valuable asset, which is why it is imperative that you protect it. In Australia you can protect your intellectual property
through copyright, trademarks, patents, trade secrets, and key agreements. If you are looking to expand your startup overseas, this process
becomes more complex.
If you are expanding into a global market, you will need to make important considerations when it comes to your IP. This will involve understanding where you have protection and where you do not. This will aid you in establishing your startup’s market position and ensure you don’t infringe on existing IP rights in the country you are seeking to expand into. At Allied Legal we have put together this article to help you understand how your startup can protect your IP assets overseas:
Protect Your IP Locally First
In Australia, your IP is protected through a number of means. This includes copywrite, trademarks and patents, and through your key agreements such as your terms and conditions or customer agreements. If you have already taken the necessary steps to protect your startup’s intellectual property locally, it will make the process of scaling your startup overseas much simpler as many of the processes are similar in foreign jurisdictions as they are in Australia.
Ownership
Some countries are subject to foreign ownership requirements. If you are considering expanding
into a global market,
you may need to determine whether or not your startup should be owned or partially owned by a resident of that jurisdiction. If this is the
case, you may be required to employ a resident of that jurisdiction as a shareholder in your foreign subsidiary.
Do Your Due Diligence
Understanding the contexts in which your IP is protected and areas where it is not, is an important first step when moving your Australian startup overseas. This can be challenging as IP laws in are not globally uniform. A patent registered in Australia, for example, only provides protection within Australia.
We recommend scoping out the international jurisdiction where you plan to move your startup and conducting the relevant research. This may involve searching company databases to establish whether your trademark or startup name is available overseas. World Intellectual Property, for example, allows you to assess whether your trademark already exists. The outcome of your research will determine whether it is worth expanding internationally. You can either do this independently or by consulting a startup lawyer.
Register Your Intellectual Property
If you want to protect your startup’s intellectual property in an overseas market, you will need to lodge a separate
patent application in each country. International trade agreements and protocols like the Madrid
Protocol
for Trademarks and Patent Cooperation
Treaty (PCT) for Patents,
will also assist you in protecting your startup’s IP.
Organise Relevant Agreements
Each party involved in your startup’s intellectual property should sign a subsequent agreement. This includes transfer agreements, licensing agreements and relevant agreements relating to your manufacturers, suppliers, staff, and clients. You should consult a startup lawyer to provide the necessary documentation, outlining clear parameters about territory, timing, and the extent to which the IP is licensed. It is also critical that your agreements with international third parties clearly set out the limitations around the sharing of intellectual property.
It is essential to obtain professional advice, preferably from a startup lawyer, to ensure that your startup receives the protection it needs. At Allied Legal we can assist your startup in registering for a patent, trademark, or copyright protection, as well as implement an intellectual property strategy overseas. You can contact one of our startup lawyers on 03 8691 3111 or send us an email at hello@alliedlegal.com.au.
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