The Key to Protecting Your IP in Latin America
Written by Andrea Dawson, Senior Lawyer and IP Specialist.
Owners of intellectual property (IP) have many ways to protect their valuable assets. Perhaps, the most obvious way is to register intellectual property in the relevant jurisdictions and then enforce those IP right against third party infringers.
When it comes to doing business in which your IP is involved, specially in Latin American countries, two key points should be taken into account: (1) that your IP rights be registered before the relevant governing body, and (2) contracts should be drafted in writing and IP should be covered in such agreements.
In regards to the first point, it is very important to protect your IP by means of registration, since, unlike what happens with copyright in which it is enough with the creation of the work to be considered the author. In the case of industrial property, the right is acquired through registration. If there is no registration, it will be very difficult to defend the rights of unauthorized use by third parties. Furthermore, hardly anyone will be interested in acquiring rights of which there is no existence or ownership. When the technology is not protected, it is considered as public domain because there is no legal requirement that requires the consent of anyone to use it.
The second key point mentioned in developing and protecting the intellectual property of your company is contracts. Contracts and intellectual property go hand in hand. No contract signed by your company is unimportant and all details must be reviewed to ensure that they enhance and do not harm your intellectual property assets. In fact, it is through contracts that intellectual property rights can be sold, licensed or even transferred. A bad contract can lead to litigation, unnecessary expense, and a loss of valuable time.
Typically, IP appears in the following types of agreements: 1) Non-Disclosure Agreements and Confidentiality Agreements 2) Memorandum of Understanding 3) Agency Contracts 4) Work Contracts 5) Sale / assignment of your IP 6) Trademark/Patent and Technology Transfer License 7) Joint venture agreements 8) Manufacturing agreements 9) Distribution agreements 10) IT agreements 11) Franchise agreements.
Most companies not only rely on their employees but also contractors, consultants or other companies to develop their intellectual property. It is essential to enter into a contract with that person or entity before starting work. Even the early stages of work can give rise to important rights, and it is important to determine from the get go, who is the owner of the intellectual property that is created and how it will be treated in the future.
It is important to note that these contracts do not need to be long or overly formal, but they must be clear and contain adequate language on intellectual property rights. It is important in this area to obtain expert legal advice before entering into an intellectual property agreement that binds you legally, no matter how simple it may seem.
Contracts are a very practical way of protecting your IP that work hand in hand with registration. As many companies are now aware, a large part of your business´s value derives from IP. IP can create value and benefits in a number of ways: it can be sold or licensed, offered as equity in a joint venture, offered as a basis to enter into strategic alliances, integrated into a current business or used to create a new business.
Over the years, we have seen a number of companies burned by not taking the proper steps to protect their IP before doing business in the Latin American Region. It is the reason we strongly suggest putting in place a plan the moment you identify the Region as a target market.
Harris Gomez Group has a specialised team of IP and Tax lawyers that help foreign companies protect and use their intellectual property assets. Our team of specialists understand both Common and local laws which allows us to bridge the gaps that tend to arise when doing business in the Region.
If you are interested or need any assistance, please contact Cody McFarlane – [email protected]