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Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
Setting Up Business in a Foreign Country
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Setting Up Business in a Foreign Country

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Setting Up Business in a Foreign Country by Daniel Polonenko and Lorie Wheeler

Setting Up Business in a Foreign Country by Daniel Polonenko and Lorie Wheeler

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  • 1. Setting Up Business in a Foreign CountryNovember 1, 2012RINSA Global Business AccessLethbridge, AB
  • 2. Agenda• Global protection of IP (Dan Polonenko)• Setting up business in a foreign country (Lorie Wheeler) 2
  • 3. Options for protecting IP What is IP?1. Trade-secrets2. Patents (includes Industrial Designs)3. Trade-marks4. Copyrights 3
  • 4. TRADEMARKS Differences Between the Four Pillars• Names & designs that are legally protected for commercial use by a trademark owner• Trademarks should be registered in each country where you intend to do business ®• Have to use them or will lose them• Rights can be perpetual BRANDING strategies 4
  • 5. Patents v. Trade SecretsTrade Secret PROs Why Patent?• Never expire – as long as the secret remains secret• No government filings or approval required• Can be very successful e.g., Coke, KFC, resinsTrade Secret CONs• Not everything can be protected – e.g. technology can be reverse-engineered• If the secret is exposed, then it’s no longer a secret• Can be expensive to maintain, requires security, contracts, complicated processes 5
  • 6. Why Patent??Patent PROs Why Patent?• Legal right to prevent others from making, using, selling the claimed invention• Creates commercial opportunities for value capture• Can control / affect commercializationPatent CONs• Becomes public knowledge in 18 mos.• Becomes “public domain” after 20 yrs.• Can be expensive to secure & maintain protection• Need to monitor marketplace for infringement 6
  • 7. When to Patent?• Invention is easy to reverse-engineer• Significant business opportunity• Secure a competitive advantage• Canada & USA: within 1 yr of a public disclosure• Everywhere else: before any public disclosure 7
  • 8. The Patenting ProcessThe Patenting ProcessStep 1: Decision to patent • Invention disclosure • Commercial value assessments • Patentability assessment • Identification of global opportunities & access • Potential commercialization / licensing = Go / No go decisionStep 2: Patent preparation, filing, prosecution, exploitation 8
  • 9. The Patenting Process Patenting is notabout the technology It’s to protect thebusiness opportunities created by the technology 9
  • 10. When & where to file patentsThree-step process over 2 ½ yearsStep 1: file an application with CIPO or USPTO • priority date / priority filingStep 2: file an international patent application (PCT) with WIPO through CIPO • within 12 months of priority date • defers “where-to-file” decisions & costs for 18 monthsStep 3: national-phase filings in selected countries • within 30 months from priority date (18 months after the PCT) • file where there are business opportunities &/OR • where competing products may manufactured 10
  • 11. CommercializationEssential component of patenting decisions• takes a long time to start generating (i) revenues & then, (ii) profits• Product testing & refining (prototypes)• Production scale-up (final product)• Low-cost high-quality manufacturing (final product)• Options for commercialization locally & beyond? 11
  • 12. Reasons for Setting up Business in a Foreign CountryTypical motivations for a Canadian entity:1) Economic Climate: • Access to capital • Lack of credit2) Access to Resources: • Access to foreign resources, know-how and technology3) Strategic Complements and Efficiencies: • Access to foreign markets generally • Strengthens local market position and mitigate local risk • Synergies with foreign technologies and foreign markets 12
  • 13. Legal Considerations: Foreign Markets• Foreign Intellectual Property laws• Foreign investors rules on ownership of property• Financial regulations – taking money out of the country• Foreign tax regimes• Immigration laws• Foreign rules governing employment 13
  • 14. Choosing a Foreign Country• Type of business helps with choosing your countries, eg, oil and gas versus agriculture technologies• Research each country for the issues discussed on the slide above• Initially research can often be done on the internet 14
  • 15. Legal Forms of Conducting Business AbroadA. Direct Foreign Presence:- Foreign Subsidiary- Branch Office- Joint Venture 15
  • 16. Legal Forms of Conducting Business AbroadB. Indirect Foreign Presence:- Distribution- Agency- Marketing Representative- Licensing 16
  • 17. Legal Forms of Conducting Business AbroadC. No Foreign Presence:- Export from Canada directly to foreignpurchaser- Transmission of information (i.e., overcomputer networks, Internet, etc.) 17
  • 18. Legal Nuances• Each individual type of legal form has particular legal nuances and pros and cons.Note: there are unique legal nuances for each type ofthese legal forms.• Not a one size fits all.• Need to consider:- type of business;- foreign jurisdiction laws; and- business objectives before selecting corporate structure. 18
  • 19. Thank YouDan Polonenko, PhD Lorie WheelerPartner, Patent Agent Partner, Business LawyerTel: 604-443-7623 Tel: 403-298-1805Email: Email: lorie.wheeler@gowllings.comdan.polonenko@gowlings.com montréal  ottawa  toronto  hamilton  waterloo region  calgary  vancouver  moscow  london

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