NZTE on IP protection for exporters

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NZTE on IP protection for exporters

Looking to export? Here is a useful guide on how to protect your business in the international market.

This article is provided by New Zealand Trade and Enterprise (NZTE) with some useful tips for exporters and how to protect your business when trading in international markets. We republished the article with their permission. Any mentions of ‘Intellectual Property Office of New Zealand’ or ‘IPONZ’ in the article refers to the information on our website.

Read the original article.

In this article you'll learn:

  • Tips for choosing a company or product name
  • How to check for existing IP
  • The different types of protections, for example, patents
  • What freedom-to-operate is
  • How to find a good IP adviser
  • The cost of infringing IP rights

Protecting your intellectual property (IP) is critical for businesses selling globally because otherwise your product/service can be duplicated and sold at lower prices.

We strongly recommend you seek the advice of an IP expert to help determine what legal protections you need in your chosen export markets.

Choosing a company or product name

If you’re just starting out in business and want to get strong trade mark protection around your brand, think carefully about how you name your company and/or products.

A unique name that is in no way generic or descriptive of your product or business (e.g 'Allbirds' not 'wool sneakers') will be much easier to protect and less likely to already be in use, both locally and in overseas markets.

Keep in mind that you can’t trade mark a word that is common in your industry: you could register the name 'Milk' as an architecture firm, but not for a milk product.

Keep your export markets in mind when developing your brand. While your brand might work well in your local market, it may not be appropriate or effective in others. You will need to get advice to ensure your packaging has local appeal and that your trade mark does not mean something obnoxious in the local language. You may need to look at adopting a brand or packaging that is specific and appropriate to that market and language.

You can check whether your company or product name, slogan or logos are in use using the Trade Mark Check tool.

Business.govt.nz’s ONECheck tool lets you check if your business name, web domain and social media usernames are available.

Does your intellectual property involve a Māori cultural element?

To ensure that mātauranga Māori is recognised and respected, intellectual property that has Māori cultural elements may be considered by an advisory committee of the Intellectual Property Office.

Read more: Protecting IP with a Māori cultural element (PDF)

Keep your IP confidential

Without legal protections in place, your IP is vulnerable, and you will need to keep it confidential. Limit the number of people who have access to the IP, even within your own company or with collaborators. If you must share access to your IP, use confidentiality or non-disclosure agreements.

If your product or process is an original invention, confidentiality is even more critical because it could determine if you can secure a patent in the future. If you have begun selling a product or published or used an invention (including publication in print or online), this ‘prior use’ can mean that you can no longer obtain a valid patent for your invention.

What legal protections can I put in place to protect my IP?

Intellectual property is an umbrella term for the different rights you can claim over your ideas, inventions, processes, brands, designs and logos. It generally comes under two broad categories: unregistered and registered. Both offer some legal protection but it’s important to understand the difference.

IP rights

Unregistered IP

Unregistered intellectual property has not been formally protected or registered with a national agency like the Intellectual Property Office of New Zealand (IPONZ). Most unregistered IP involves confidential information – things you wouldn’t want to share with your competitors – such as your business systems, client databases or manufacturing procedures.

Unregistered trade mark

A word or logo with the ™ symbol. This offers limited protection but can be a useful option to help establish your presence in a fast-moving industry. Unregistered trade marks are complex to enforce and companies would need to produce evidence to prove their rights to the name or brand. Registering an important trade mark is generally the safer option.

Confidentiality agreements

Contracts that keep valuable information safe. These may also be called secrecy agreements or non-disclosure agreements (NDAs). When developing a new technology, a company will ask staff and contractors to sign an agreement not to steal their idea.

Copyright

Copyright protection exists automatically on an author’s original work, including a company’s original documents, marketing materials, scientific models, software and designs. To help in asserting copyright, it is a good idea to stamp or watermark important documents. Depending on their value to your business, you may want to formally protect these rights.

Registered IP

Registered intellectual property is a valuable company asset. It mainly takes the form of registered trade marks, designs, patents and plant variety rights – these are the formal legal protections you can put in place to protect your IP. In New Zealand you apply to IPONZ, the Intellectual Property Office of New Zealand to secure these rights and to apply for international IP protections.

Trade marks

A brand name or logo with the ® symbol, e.g Coca-Cola®. You can register the names and/or logos of your company and products as trade marks. Registration is done in relation to particular classes of goods or services. Trade marks can be renewed indefinitely provided you continue to pay the registration fee for each country of interest. In order to ensure the necessary rights and protection as an exporter, you may need to register in each country you intend to trade in or, in some cases, filing under The Madrid Protocol may provide enough protection. New Zealand is part of The Madrid Protocol which allows trade mark owners to apply for their trade mark in over 100 participating countries by filing one application with their local trade mark office – for New Zealand that is IPONZ.

Designs

You can also protect the appearance of your products by registering the design. Copyright may offer some limited protection but, outside New Zealand, it generally does not prevent others copying your new and original design by making it in three dimensions. Registering your designs can give you much stronger rights, but this needs to be weighed up against the cost of doing so in each country you’re interested in. Registering also allows you to more easily sell or license your design in the individual countries for which it is registered. In New Zealand, registering a design gives you exclusive ownership for up to 15 years, as well as priority filing rights in other countries within a six-month period.

Patents

Patents are the most powerful form of intellectual property protection and are typically used to protect a new product, process or material. The easiest way to think of what to cover with a patent is an original invention, for example Fisher & Paykel Healthcare’s respiratory devices.

Patents were initially more widely used in industries such as engineering and pharmaceuticals, where companies invest significant resources into research and development, but are now used in most areas of commerce. In exchange for disclosing an invention or idea to the world, the owner earns a monopoly right to make, use and sell it – usually for a period of 20 years. When the patent period ends, others are free to copy the invention that is disclosed in the patent subject to any other rights that might exist.

Plant variety rights

This is a specialised area of intellectual property that protects those who breed new varieties of plants, for example a new apple variety. Plant variety rights effectively variety owners the rights to license others to commercialise their novel variety of plant. Plant variety rights are available in most countries and are also called plant patents or plant breeder rights.

Resource: A visual overview of IP protections from IPONZ (PDF)

Freedom-to-operate (FTO)

Freedom-to-operate or FTO means you have the freedom to test, market or sell a product or service in a specific market. FTO searches look at all the registered IP and patents in your intended export market that potentially overlap with your product and could result in IP infringements. This is an area of IP where you should seek advice from an IP expert, particularly if you are:

  • Looking to export complex products,
  • Operating in complex, high-tech industries,
  • Exporting to complex, litigious markets, such as the United States.

If you are selling simple products, like a t-shirt of your own original design, the chances of infringing others’ IP are low. For more complex inventions or products with multiple parts or components, the likelihood of IP infringements increases. For example, even if you hold the patent for a novel bike gear in your export market, another company may hold the patent for the bike frame. If you attempt to sell a bike in that market, you could be infringing on their IP – which means you don’t have FTO.

How do you find an expert?

3 steps to finding a good IP expert

  1. Educate yourself about the sort of information you should be getting from an IP adviser. They should ask you broad questions about your business, including your export strategy and possible markets.
  2. Ensure they understand your industry and technology – particularly if you will be filing patents and/or intend to enter the United States where your IP will be closely scrutinised.
  3. Select someone you trust and with whom you have a good rapport. And make sure they’re interested in your business.

Do your homework

To help your IP adviser make the best recommendations for your business, before you meet, ask yourself:

  • What’s important to my business?
  • What do I intend to do with my business? If your short-term plan is to sell to a US venture capitalist, you may want to build up a portfolio of patents as another business asset.
  • What markets am I likely to enter?
  • How do I plan to enter them?

The more information, background and context you can give your IP adviser, the better equipped they will be to work with you on an effective IP strategy.

  • Together, you can discuss the following:
  • What is the product, service, technology?
  • Is there anything inventive about it?
  • Could it be patentable?

Should we patent it? Would we get a broad enough patent to justify the spend? You may well decide that keeping your idea as a trade secret and not disclosing it to the world is the best course of action. But if you’re making a clever widget that could easily be copied, a patent might be the most relevant form of protection.

Getting value from your IP adviser

You will gain the most long-term benefit if you establish a good relationship and work collaboratively with your IP expert. Get them onto your premises so they can see exactly what you do. The better their understanding of your product or service and the next iteration of it, the more value they can add e.g. by keeping an eye on your competitors’ moves to protect their IP.

Be upfront about how much you have to spend. If it’s appropriate, you may look to negotiate some sort of retainer. A good adviser will highlight where you can save money and where your spend is potentially wasted.

Resources

IPONZ and Callaghan Innovation have information available on patent attorneys and IP experts.

What business practices can I put in place to protect my IP?

Maintain confidentiality

Only share critical IP on a ‘need to know’ basis within your company. Put in necessary file protections and keep a record of who has access to the information. Ask staff who are working with sensitive IP to sign confidentiality or non-disclosure agreements (NDAs). Although New Zealand law states that IP developed in the course of employment belongs to the employer, it is a good idea to specify this IP ownership in staff contracts. If you have to share your IP with a third party, for example a manufacturer, ensure you have a written confidentiality agreement or NDA with them.

Competitor and market analysis

Carry out regular competitor and market analysis to understand potential challenges to your IP. At a basic level this might include keeping an eye on competitors’ websites and looking at the sales of similar products in your export markets and via channel partners – you can do this for intended export markets too. You can also carry out regular patent and registered IP searches through the free online tools outlined in this article.

Move quickly

Developing an agile business that can innovate quickly and outpace competitors can help protect the value of your IP. Think about:

  • Capturing market share and reputation through speed to market
  • Practising continuous improvement and innovation to keep ahead of the field
  • Maintaining product design and quality ahead of likely imitators
  • Using marketing and branding which competitors need time to emulate.

Find your niche

Identifying and targeting niche markets within your broader market can help you find new product opportunities that aren’t already covered by patents or trade marks. For example, you could secure a new market by introducing novel renewable materials into the manufacture of your high-performance sneaker. Good competitor and market analysis will help identify potential niches. A different service model, for instance subscription or bespoke products, could be another way to secure your market and the value of your IP.

Avoiding IP infringements

There are two sides to intellectual property: protecting your own IP and ensuring you don’t infringe another company’s IP rights.

Cost of infringing IP rights

If you unintentionally infringe another company’s IP rights, you may have to do one or more of the following:

  • Settle to avoid litigation
  • Pay licensing fees to the other company
  • Withdraw completely from that market
  • Rebrand straight after you have launched.

Where to find trade mark and patent search tools

You can carry out your own basic trade mark and patent searches using free, publicly available search tools like ONECheck, but you should seek advice from an IP expert before entering a new market.

Keen to realise your global ambitions? New Zealand Trade and Enterprise can help - TakeOnTheWorld.nz.

Disclaimer: This article is provided by New Zealand Trade and Enterprise (NZTE). Although we intend the content (including advice, templates and other tools) we provide to be helpful, NZTE makes no warranty or representation about its accuracy, completeness or suitability for your business. It is your responsibility to decide how and whether to rely on that content and you rely on it at your own risk.The content is not, and is not intended to be, expert legal, financial, investment, tax or professional advice and in many cases it will be prudent for you to seek expert advice before making a decision. We are not responsible for any loss or damage arising from the use of this content.

Also please note that the information is only valid at the time of first publication.