The eight IP questions you should be asking before you bring your business into China.
The eight IP questions you should be asking before you bring your business into a foreign country

As companies transition out of China and move elsewhere, my law firm’s international IP attorneys are helping them protect their IP during and after this transition.

The following are the eight questions we suggest companies starting a business in a foreign country should ask about their own intellectual property before they start doing business in that foreign country, be it Mexico, Spain, Japan, Thailand or wherever.

1. Can we adopt, use and register as trademarks the names we want to use for our products or services in the foreign country?

2. Is any aspect of our IP new, inventive and useful and therefore potentially patentable in the foreign country or anywhere else relevant to our business?

3. Have we instituted procedures to keep our potentially patentable inventions confidential until a patent application may be filed?

4. Are there any third party patents that could prevent us from selling our services or products in the foreign country or even from manufacturing our products there or anywhere else?

5. What aspects of our products or services are protected by copyright?

6. Is the design of our product protectable as a design patent in the foreign country or elsewhere?

7. Are there any third party design registrations that could prevent us from selling our product in the foreign country or elsewhere?

8. Do we have written agreements with our foreign country employees and manufacturers that clearly assign to us any IP we create with them and that provide for maintaining the confidentiality of our information and our trade secrets?

Your thoughts?

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Photo of Matthew Dresden Matthew Dresden

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists…

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists, and has worked on behalf of film studios, cable channels, production companies, video game developers, magazines, restaurants, wineries, international design firms, product manufacturers, outsourcing companies, and computer hardware and software companies. Matthew is widely viewed as an expert in Chinese intellectual property law, and is regularly quoted in publications from the New York Times to The Economist to Variety.

Before attending law school, Matthew worked in Hollywood for eight years as an independent filmmaker, starting as a production executive for Roger Corman’s Concorde-New Horizons Pictures. Before that, he was a computer science graduate student at Stanford University. He has also worked as a journalist, a transportation planner, a food critic, and a website designer. He serves on the board of the Northwest Film Forum, and is currently the immediate past chair of the Washington State Bar Association’s International Practice Section. He is also an adjunct faculty member at Indiana University Maurer School of Law, where he teaches a clinic on legal issues for independent filmmakers.

Matthew was born and raised in the San Francisco Bay Area. He spends his free time watching movies, hiking, cooking spicy food, and relaxing with his wife and daughter.