Fail to think globally (no. 12 in our list of IP mistakes)

During the past decades, many of the regulatory and technical barriers to international market entry have been all but erased. This has made it easier for companies to expand their operations abroad, but has also making them more vulnerable to new competitive threats from companies abroad expanding into their markets.

The decision to expand into international markets is and always should remain a business decision that carefully balances the benefits and risks presented by the new market.

As an IP professional, failing to think globally generally means failing to foresee potential opportunities and pitfalls of new markets and create the necessary environment that will put the company in the best possible position in those markets. There are many reasons why this would happen and probably two of the most common reasons are:

1. Not realizing or communicating the business potential the product might have in a respective market.
2. Thinking about IP protection in terms of cost-of-gaining-and-maintaining-IP (patents most cases) – focusing on restraints rather than opportunities.

Additional layers of complexity in creating adequate IP protection globally are brought by strict resource allocation within the company, the somewhat unpredictable value of present R&D developments on global markets and unknown local behaviors. There are, however, some basic things that are worth considering in IP development and the creation of global IP strategies that will help support strategic expansion in new marekts.

First, asking what the scope of the R&D development is and what the corresponding IP should actually protect is an incredibly important aspect of determining both the geographical scope as well as the breadth of protection required from an IP right. Is the IP necessary just to be present on the market? Is it protecting key differentiating characteristics of the product at the point of sale? Is the IP used mainly for steering of competition, etc.? The answer to these and similar questions is highly dependent on the IP professional’s ability to bridge professions and understand business as well as sales necessities. If answered correctly, the questions can lead to valuable models for decision makers to guide IP development on global markets effectively considering their perceived value, cost incurred, and the criticality of IP.

The recognition and use of all available resources is another important factor in creating global IP strategies. As mentioned above, resource utilization is very often a constraint that will negatively impact the capacity of an IP professional to act globally. Not having a patent/IP protection in a jurisdiction, however, does not mean that expanding in that jurisdiction is unwise from a business perspective. This may, however, require the IP professional to shift from traditional IP practices to creative IP strategies: focusing on trademark use and communication, cooperation with existing companies on the market, using intellectual capital to shift to more valuable positions in the value chain, offering or creating system solutions/platform solutions instead of individual products, and other such possibilities.

(This is number 12 in our list of IP mistakes and how to avoid them.)

(Image credit: somegeekintn)

7 Comments on “Fail to think globally (no. 12 in our list of IP mistakes)

  1. A very typical mistake that I have observed is in relation to adding inventors to a US provisional. Quite a few outside counsel think that inventor can be added to the application at the time of conversion, which is true. What they do not envision is global filing aspects. Laws in other jurisdiction may not be that black and white as in US. 

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    •  absolutely, Naim – and the laws on who is an inventor vary as well – which can be a very interesting ground of invalidity attack – a tactic we have used before

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  2. When drafting claims and their support structures within a patent application one needs to think globally and recognize that the same claim in lets say US has to be infringed literally while in Canada the infringement can be more broad based as Canadian infringement analysis is different. A similar argument can be made for other jurisdictions. Take away try to recognize potential market opportunities for the invention and adjust accordingly.

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  3.  

    While I wasn’t focusing on legal tactics to be
    applied in local jurisdictions I am glad you, Naim and Dunc, gave some examples
    of them – mastering this base knowledge would obviously have an impact on the
    overall success of a global IP strategy 

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  4. With technology cycles shrinking overall, the art of balancing international filing with reduced shelf life for the technology is really becoming an art after all. One possible way to mitigate the risk is to to study evolution and trends in supportive and associated technologies in potential markets and extrapolate the patterns to your technology which may be very new. But there is  no guarantee that there will be good visibility. I think in building portfolios a certain  financial allocation has to be made to cover risks of international filing.

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    •  Agree with that – also defering decisions until they have to be made and a water tight system for reviewing business value and culling regularly

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