Pictured: Mike Burke, Partner, Arnall Golden Gregory

By Mike Burke, Partner, Arnall Golden Gregory

Every now and then, a non-US company will contact me after they have started US operations, but have not protected their intellectual property here. In some cases, the company does not have a full picture of what they have or where they could/should protect it—they have not audited what they have. In one (admittedly extreme) case, a European client (not Ireland or NI) found out that a counterfeit (and bad-quality) version of their product was beginning to show up in California (originated in China), but they had not protected their marks in their home jurisdiction or in the US. This meant that we could not move to block infringing items from entering the US market and didn’t have as strong an infringement claim as we could have had.

So, a few suggestions for the Irish and NI companies as to IP protections:

  1.  Know what you know—audit your IP as you develop your export strategy;
  2. Remember that IP can come in many shapes, and from some unexpected places;
  3. Your IP is obviously worth something, so don’t skimp on the protections;
  4. Liberally, and smartly, use non-disclosure agreements (more on that soon);
  5. Keep in mind that some IP protections are jurisdictional—meaning that they extend only as far as the granting country’s borders, so what you may have at home may not extend to the US;
  6. As for trademarks, while the US does recognise common-law trademark rights, it’s far easier and more effective to protect registered marks. Trademark infringement actions protect only registered marks (in general).

I suppose that last point may be one of the most important—a modest front-end investment can avoid a much larger cost later. Shocking, I know—a lawyer suggesting that you spend less money on legal fees. But it makes sense—even if the company gets a good result, it still has spent time and money (i) on an issue that could be addressed at the front-end; and (ii) would better be used to develop business.