WEIHONG HSING
Panitch Schwarze Belisario & Nadel LLP 2005 Market Street, Suite 2200 Philadelphia, PA 19103, USA

Abstract

Adequate protection and effective enforcement of intellectual property (IP) rights are critically important and challenging when working with overseas partners. Issues and tools to safeguard one’s IP rights and minimize the liabilities of IP infringement when outsourcing are discussed.

GUARANTEEING IP PROTECTION WHEN WORKING WITH OVERSEAS PARTNERS

Working with overseas partners or outsourcing has become increasingly popular with companies in developed countries. In addition to outsourcing conventional tasks such as low skill level, labour-intensive projects, product manufacturing or packaging, or clinical trials, there is a new trend to outsource research and development (R&D) by companies of all sizes, including some major pharmaceutical companies, as part of an overall business strategy. This new trend raises new awareness and concerns over IP protection when outsourcing due to the importance of IP to R&D, particularly for the pharmaceutical industry.
Depending on the nature of outsourcing, any type of IP asset, such as patents, trade secrets, trademarks, copyrights or industrial designs, etc., may be involved. IP issues related to outsourcing may include protecting IP assets, enforcing IP rights, and minimizing risks of IP infringement in the country of outsourcing. This article will focus on protecting IP assets, with brief discussions on enforcing IP rights and minimizing risks of IP infringement (1).