First off, some sad news: the last issue of Minnesota Business magazine has rolled off the digital presses.
Minnesota Business was, in the words of former editor-in-chief Steve LeBeau, the Twin Cities’ true “community business” monthly: an inclusive, supportive publication devoted to the stories behind the dollars and cents.
My final Minnesota Business feature explored the head-spinning world of intellectual property protection abroad. What do you do — what can you do — when the very same people with whom you’re trying to get to “yes” are itching to get their hands on the proprietary designs, processes, and formulas you’ve worked so tirelessly to refine?
Quite a bit, it turns out. Three Minneapolis-area IP experts set me straight.
From Jay Erstling, former director of the Office of the Patent Cooperation Treaty and, inarguably, one of the world’s foremost authorities on patent protection, I learned that pre-planning is essential. It’s “much easier — and cheaper — than fighting a rearguard action against foreign counterfeiters and competitors,” I wrote.
Erstling also emphasized that, contrary to popular belief, patents aren’t always the best choice for IP protection. A patent is really a grand bargain: in exchange for a lengthy but temporary monopoly on the protected IP, you must describe it in detail sufficient to render it duplicable. In other words, your patent provides your competitors with a roadmap to copy your invention — and, once its protection expires, allows them to do so legally. For really sensitive inventions whose disclosure would, as I wrote, “devastate your business,” trade secret protection is a better bet. The Coca-Cola Classic formula is probably the world’s most famous trade secret; Coke avoided India for years on account of the country’s weak trade secret protections.
From Anneliese Mayer, an intellectual property attorney at Merchant & Gould‘s Minneapolis office, I learned that filing a provisional international patent application isn’t all that expensive (though cash-strapped entrepreneurs will no doubt quibble). It’ll set you back about 5 grand, she told me. The real expense comes later, if and when you choose to acquire country-specific patent protection. A typical six-country package costs 200 large “over several years,” she said.
Finally, I learned from Mayer colleague Rachel Zimmerman Scobie, a Merchant & Gould partner, that truly comprehensive international IP protection requires an international support network. Blithely assuming that a new market’s IP regime is comparable to the United States’ — and, accordingly, relying solely on U.S.-based experts — is a sure way to get into trouble, she said.
Read the whole thing here.