China IP Theft
From the New Yorker.

In deleting old emails I came across one from a long time ago that I had written to a Spanish client that had retained my law firm to protect their intellectual property pretty much throughout the world. My email essentially set forth the following:

 

We should initially consider and discuss the legal options for protecting your IP, including the following:

  • Figuring out in what countries you should register your IP. Very generally, it makes sense to consider those countries in which you are having product made, those countries in which you do business, and those countries into which you sell your product or services. You also should consider the countries in which you are not presently doing these things but are planning to eventually do so.
  • Figuring out IP you have that warrants you spending money to protect.
  • Figuring out how to protect the IP you wish to protect. This will typically involve applying to secure/register a trademark, copyright or patent.
  • Figuring out what contracts make sense for additional or complementary IP protections. These contracts might include licensing agreements, trade secret agreements, NNN Agreements, trade secret agreements, confidentiality agreements, and non-compete agreements.

Equally importantly, we should consider and discuss non-legal means for protecting your IP, including the following:

  • Keep your key technologies and procedures in Spain.
  • Keep your key technologies and procedures confined to as small a group of trusted people as reasonably possible.
  • Design your products so they are difficult to copy.
  • Compartmentalize your production processes so no single entity can produce the complete product.
  • Outsource different parts of your products to different companies to minimize the risk of creating a new competitor.
  • Know who you are hiring everywhere in the world and make your employees sign non-compete and non-disclosure agreements (NDA).
  • Conduct due diligence on all of your potential and current suppliers and distributors. Select partners with reputations of their own to protect and include IP protection clauses in your contracts with them. Your odds of getting your IP stolen by a company with nothing to lose are way higher than by a company with a lot to protect.
  • Monitor the trademarks and patents and copyrights your competitors seek to prevent copycats.
  • Monitor IP violations and take prompt action against them. Your IP rights mean little if you do not protect them.

 

Getting your legal and operational house in order will obviously not prevent all IP problems, but it is a necessary start.

Did I miss anything?

Print:
EmailTweetLikeLinkedIn
Photo of Dan Harris Dan Harris

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network. 

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network.  His work has been as varied as securing the release of two improperly held helicopters in Papua New Guinea, setting up a legal framework to move slag from Canada to Poland’s interior, overseeing hundreds of litigation and arbitration matters in Korea, helping someone avoid terrorism charges in Japan, and seizing fish product in China to collect on a debt.

He was named as one of only three Washington State Amazing Lawyers in International Law, is AV rated by Martindale-Hubbell Law Directory (its highest rating), is rated 10.0 by AVVO.com (also its highest rating), and is a recognized SuperLawyer.

Dan is a frequent writer and public speaker on doing business in Asia and constantly travels between the United States and Asia. He most commonly speaks on China law issues and is the lead writer of the award winning China Law Blog. Forbes Magazine, Fortune Magazine, the Wall Street Journal, Investors Business Daily, Business Week, The National Law Journal, The Washington Post, The ABA Journal, The Economist, Newsweek, NPR, The New York Times and Inside Counsel have all interviewed Dan regarding various aspects of his international law practice.

Dan is licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at his firm, Dan focuses on setting up/registering companies overseas (via WFOEs, Rep Offices or Joint Ventures), drafting international contracts (NDAs, OEM Agreements, licensing, distribution, etc.), protecting IP (trademarks, trade secrets, copyrights and patents), and overseeing M&A transactions.