企业法务降低知识产权风险的策略 | 每日IP英文第432期
Protecting your trademarks: monitor your brand online
Third-party watch services to track online activity and potential incidents of trademark infringement or counterfeiting.
E-commerce partners assist in trademark enforcement matters and help to eliminate the “whack-a-mole” elements to online brand policing on e-comm platforms — i.e. Amazon brand registry
Customs authorities around the world record trademark rights. Work with authorities to educate on goods to help them spot counterfeits, specifically in high-risk markets.
Protecting your patents: monitor your market & know your IP risks
Monitor your market/industry to minimize potential for litigation
Monitoring tools
Trusted IP partners - partner with sophisticated IP law firms like Smart & Biggar
Automated monitoring systems - to identify new patents as they are filed by third party companies in your space / an adjacent space
Heat map tools - to understand the competitive patent landscape
Sophisticated spreadsheets - to track and monitor the patent landscape
Make design pivots
Have a process in place for reviewing new designs and development
Acquire rights and IP
Participate in patent licensing consortiums to join and acquire rights to use a whole landscape of patents.
Trade IP with companies in adjacent spaces through cross-licensing or paying for a license
Know your IP risks
Understand and manage the risk associated with unauthorized use of your company's IP
Develop a robust system of interlocking IP assets to protect your main business and make it difficult for competitors to enter your space
Protecting innovation with an IP centric culture
Integration with R&D teams – Integrate your IP team and lawyers into the R&D Group to contribute to the decisions around what new things are developing, what is being invented and how protection occurs.
IP Training – Develop strict processes and training regarding IP, from documenting inventions to filing and post-issuance, for deadlines and enforcement.
Anti-Counterfeit measures – Counterfeit products can cost companies a lot, and in sectors like pharmaceuticals, they can also be dangerous. Keep your distribution and supply chain secure with barcodes, seals and markings to protect the product and make it obvious to consumers when the product is counterfeit.
Using IP offensively and defensively for commercial gains and benefits
Infringement and counterfeiting in the lifestyle space remain high, resulting in heightened risk from third parties in high-risk markets.
In certain CPG categories like disinfectants, hand sanitizers and PPE, price gouging by rogue third parties during COVID was an issue. Specifically, these products were being hoarded and resold at very high markups, potentially damaging the goodwill associated with those brands.
In-house counsel views on IP: lessons from the front lines
Never assume that other jurisdictions will operate the same way as your local jurisdiction.
The optics of coming down too hard [on infringers] can be damaging to public opinion (the “big, bad brand” going after smaller brands). Rather than issuing a cease and desist letter, sometimes a lighter touch and negotiation of a private settlement may be a better approach.
Hire experienced and informed IP counsel who can provide the best and most trusted advice. It will save time and money in the long run.
Top IP tips and tricks for in-house counsel
Ask a lot of questions – the IP experts you work with should be able to answer clearly and reasonably.
Keep a business perspective – sometimes the legal answer is not the best business answer!
Leverage IP experts and counsel to train and educate in-house legal teams and R&D staff.
Get to know the lawyers on your case teams – pay attention to what their individual and firm strengths are and make sure their associates and Jr. partners are treated well, so they will stick around for the long term.
Advice to in-house counsel dealing with a potential IP infringement
Understand the implications of losing [business risks and legal costs]
Always keep the business in mind - what is best for the business is the best course of action
Keep track of your business goals and understand what you’re trying to accomplish