Ahead of the Newcastle trade summit, we spoke to Liz Ward, the principal of Virtuoso Legal, about how companies need to be proactive rather than reactive when it comes to things like Intellectual Property.
You can sign up to the Newcastle summit to see Liz deliver her ‘Protecting your Intellectual Property in overseas markets’ presentation here:
http://www.export.org.uk/events/EventDetails.aspx?id=1069497&group=
How important is it for businesses to get ahead and factor in sorting out their IP in their target markets - as part of their export plan?
IP and contracts are absolutely fundamental to any kind of export. One of the biggest mistakes that people make in exporting is not to take professional advice. It’s the old adage that an ounce of prevention is worth a pound of cure.
People invest a huge amount in getting a product label or instructions translated or made suitable for a new market, or in attending tradeshows to get into the market, but they fail at the final hurdle because they’ve not taken professional advice on things like contracts and getting their IP in order.
Does there need to be a greater awareness of it when it goes wrong?
People see it as a cost but it’s not, it’s an investment in your future – it’s future proofing. People see getting your website translated as an investment for getting sales, but investing in getting your contracts in place or proper IP protection is also an investment in your future.
It really does sort out the good from the bad exporters in that respect.
It goes back to the big bit of advice around being proactive rather than reactive?
Yes indeed. It’s about spotting those big elephant traps that you could fall into. A lot of that can be avoided if you ask the right questions beforehand.
How can companies go about protecting their IP in overseas markets? Where do you start? How do you find the right advice?
With getting any professional advice you need someone who’s got the relevant experience, which in this is case is in relation to international trade. You need to find those people because just relying on your local bank manager, accountant or high street lawyer to do anything like what you need is a stretch on their capabilities. It ultimately puts you at risk.
A lot of it is about doing the relevant searching. A competitor analysis for example is a good approach.
At the London summit in 2016 you presented on some of the potential impacts of Brexit on IP. How can companies, at this stage, plan for something that is so unknown?
Again it’s about looking at your contracts. We don’t know what the final Brexit outcome is going to be but you can put clauses in your contract that will give you the ability to renegotiate things once the landscape around Brexit is clearer. You can ensure that the rights and responsibilities, for example, are clear for post-Brexit so that you’re not going back and saying we’re not sure about things now that there’s been change.
You can leave it open and make it absolutely categorically clear in the contract that you can go back after Brexit and look again at things that may have changed or are no longer relevant because of Brexit.
In longer-term contracts, where you’re tied in with a distributor for 5 years for example, you need to make sure you can go back at some point and renegotiate key points that are impacted by Brexit.
What could the impact be in regard to IP?
We’re all going to be part of the common IP convention protocols that have been there for ages. What we’re not sure about at the moment is things like the validity of European trademarks.
At the moment to capture the whole of Europe we’d advise people to file one European trademark. At some point in the future you may have to file a European trademark and a UK trademark. It’s the same for design – you may need to file a UK design and an EU design.
At the moment if you file a European design, right away you get cover in all 28 European countries, and it’s the same with a trademark. We don’t know what the case will be post-Brexit.
This is one of the real downsides of leaving the EU – the uncertainty about how things like IP and trademarks will work. There are a lot of conventions that sit outside that framework that will still apply and there are things that will go ahead regardless because they’re governed by things outside the EU – like for example, there’s going to be a European patent court based in London which will cover all European patents and that will sit aside the scope of the EU, for the moment anyway.
The other big uncertainty is what the court for resolving any kind of dispute is going to be and whom we’re going to still acknowledge. Will it be something for just the European courts or just the Supreme Court in the UK – we at the moment just don’t know that. IP is the same as everything else in that respect.
What are you seeing on the ground in terms of the businesses you’re supporting - are they taking the proactive necessary steps or is uncertainty hampering them?
We’re keeping our pulse on the developments and potential changes, but we’re reluctant to advise people to go to early – to jump one way or the other.
Although some trademark attorneys are advising to file for both the UK and the EU, in my own opinion it’s a bit too early to do that because that’s a cost they may not necessarily need to pay because we don’t know how it’s going to work yet. With bigger companies it may not make a big difference anyway, but with a lot of SMEs, spending another £1000 where they don’t need to be is an investment they don’t need to make.
I’m reluctant to rush to the worse case scenario where you have to double file because we don’t know for certain that’s going to be the outcome.
Are business rushing to be proactive or they mostly just waiting and seeing?
For a lot of businesses the main thing Brexit has done is made them think about exporting a lot more and going outside their comfort zones beyond Europe. The downside to this is that some of them are rushing off to do it without taking the proper strategic advice – that’s where those elephant traps sit. It’s not that these markets aren’t accessible and great to do business with – they are! – but you need to know were those dangers are.
That’s the great thing about the Institute of Export & International Trade in that you are creating an agenda that is proactive. You’re helping people to create a strategy and think things through. A lot of people don’t do that in business. They’ll do it on their product line, perhaps – if you’re a structural engineer you’ll have your Gant chart to stick by - but a lot of businesses don’t have that for how they’re going to enter each new market.
How important are summits like the upcoming Newcastle summit – at which you will be speaking – for sharing information and talking to the right people?
They are absolutely vital. One of the biggest problems we’ve had in the past is that businesses have had too much information given to them from various sources but what they really need is genuine expert insight and advice. They need proper advice and it’s really worth paying for.
I was talking to a small business this morning that needed some information on how to get certificates of origin for an export and struggling to get advice from some of the free bodies out there, but with the Institute you can get that advice straight away.
I’m not knocking some of the excellent free advice that is out there – people are trying their best – but they are not in the league of dedicated experts.