Use IP Lawyers to Protect International Patents

05th January 2011
By Tim Bishop in Copyright & Trademark
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If you are thinking about getting involved in an international business using patented, copyrighted or trademarked products or ideas then you should seriously consider hiring intellectual property or IP lawyers who have experienced in this area.

Indeed, this is recommended by the World International Property Organisation, which says in its advisory document: "The help of an individual consultant ... that will give advice and render other services concerning the planning for, and the actual acquisition of, a given technology can be useful, if not indispensable". So how can your IP lawyers help you?

One such method for protecting the transfer of information is the use of a know-how contract. This agreement promises to communicate from one party to another, all the relevant information that will allow them to exploit the invention. There are a variety of ways in which the information can be transmitted. Physical forms include the use of documents and photographs, or computer files. This might include engineering or architectural drawings, equipment details etc.

Alternatively it may be practical to pass on know-how in an intangible form; this might include some forms of training or one-to-one support, or product demonstrations in which situation knowledge is imparted from one person to another.

Whatever kind of contract, it should be drafted so that it is sufficiently watertight should it be challenged in the future. Intellectual property lawyers who are specialists in this area will be able to advise on areas of an agreement that require to be included in documents. In situations where it is know-how that is being transferred, there is a need to be on guard against those newly appraised of information deciding to take what they have just learnt, and starting to develop their own similar or parallel technologies. For this reason, it is important to document dates on which particular individuals are exposed to any new information. Only then, at some point in the future, will you be able to confidently create a suitable defence.

While the passing on of know-how may be considered potentially dangerous, a watertight agreement will minimise the problems of losing control of specialist knowledge. And if you are an inventor, the flip side is that people given access to the information might be better able to exploit it commercially; perhaps by integrating it in an existing product range, which already has a brand awareness in its marketplace. So long as the inventor has made a satisfactory arrangement to collect suitable payment for the good sold, often via a licence or royalty on sales, then he stands to benefit much more quickly and more substantially, than if he were to go it alone.

But the key message from those in charge of policing the management of international patents, is that sound intellectual property advice at the outset will prove invaluable once commercial contracts are entered into. So make that call to your IP Lawyers now!


If you are looking for specialist intellectual property advice, contact one of the specialist IP Lawyers at Bonallack & Bishop. Senior partner Tim Bishop is responsible for all major strategic decisions at the firm, which he has grown by 1000% in 13 years. He has plans to expand further, seeing himself as a businessman who owns a law firm.
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