train the trainer: enhancing ip capacity for · project manager for the china ipr sme helpdesk....
TRANSCRIPT
Train the Trainer:
Enhancing IP Capacity for
SMEs’ Intermediaries
International IPR Stakeholders' MeetingBrussels, March 27 2019
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Speakers’ BiosDr. Marta Bettinazzi
IP Business Advisor, South-East Asia IPR SME Helpdesk
She is an Italian lawyer with a PhD in Roman law and European legal culture. She recently completed an LLM in Germany specializing in EU commercial law and IP law.
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Aida Balbuena-DíezProject Manager for the China IPR SME Helpdesk.Graduated from Spanish law and French law, she was awarded her LL.M. by the University of Hamburg, and began her career as a trainee for the Spanish Consulate in Paris and later the EU Delegation to China and Mongolia.
Dr. Begoña G. OteroIP Business Advisor, Latin America IPR SME HelpdeskIP professional with a cross-functional background as academic administrator, legal counsel and researcher. Strong foundation in information law and competition law.
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Going international: Why is IP a “backpack” must?
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IP is a key feature for internationalization
Boosting partnerships and cooperation opportunities
Reputation building and the strengthening of your market position.
Exploitability
Exclusivity
Legal certainty.
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Born national – needed internationally
IP is territorial in nature
Each country has its own legal framework
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IPRs in practice
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TRADE MARK:
•LOGOS
•PACKAGING
PATENT:
• IMPROVED
PROCESSES
GEOGRAPHICAL
INDICATION:
•PART OF THE
COGNAC GI ASSOCIATION
INDUSTRIAL
DESIGN:
•SHAPE OF THE
BOTTLE
TRADE
SECRET:
•KNOW-HOW
COPYRIGHT:
•ORIGINAL
PACKAGING
•GLASS DECOR
How to get IP-ready for your
international journey
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Checklist1. Develop your IP strategy in advance
Identify your main IPRs
Know the IP landscape and market conditions
of the target country
Carry out preliminary IP
searches
Draft the agreements with partners properly
Register
the
rights
GO!
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National registration
•Need to register in each country
•Cheaper and faster if you have to register in few countries
•China System requires a national certificate for CTMO anyway so international route is not very effective.
International registration PCT/ Madrid System
•Simplify registration process
•Economically worthy for more than 2-3 countries
•Not all the countries are member of these treaties
•Delay some patentability decisions
•Time: you would be provided with up to 30/31 months from the application date to decide whether you apply for Patent protection for your inventions
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Checklist2. National VS International registrations
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Checklist2. National VS International registrations
Requirements for registration
are similar worldwide
Each country has its own
particularities
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Professional advice IP advice is recommended
Contact the international IPR SME Helpdesk or local IP
expert
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Checklist 3: Main tools for IP enforcement
Monitoring the market for counterfeits
Send cease and desist letters
Registration at Custom databases (when available)
Preliminary injunctions (when available)
Administrative, criminal and civil actions, and alternative dispute resolution
Lack of specialization of IP Courts
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Slow
+
expensive
Fast
+
effective
Best practices and common pitfalls detected by the International IPR SME
Helpdesks
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Common pitfalls
Poor knowledge of the sector
Fail to identify & properly valuate IPRs
Protect after commercialising/ disclosing creation/ innovation details (e.g. at Trade Fairs)
Unclear definition of the ownership (e.g. collaboration contracts, R&D contracts)
Lack of IP protection strategy
Do-it-yourself approach
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Best practices
Identify your IP assets in advance
Conduct prior IPR searches
Protect your creations/
innovations before negotiating/
disclosing (NDA, IPR application).
Seek IP professional assistance with
experience on the relevant countries
Perform an exhaustive IP
strategy according to your case (protection + enforcement)
Be ready to enforce your rights
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Thank you for you attention
Questions?
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www.china-iprhelpdesk.eu
www.southeastasia-iprhelpdesk.eu
www.latinamerica-ipr-helpdesk.eu