Are you a LatAm based entrepreneur and would like to learn how to optimize the value of your intellectual property?

Intellectual property consists of tangible and intangible creations by a person, a group of people, or entity. Intellectual property can be a fundamental piece of any company's asset portfolio. Each form of intellectual property provides the owner with an exclusive “bundle of rights.” The rights are divisible, and each right can be sold or licensed.

The scope of the intellectual property bundle of rights and the ways it can be divided is determined by the type of intellectual property itself and the law of the controlling jurisdiction. 

Common types of intellectual property include:

Copyrights: A copyright protects the expression in an original work of authorship that has been fixed in a tangible medium, such as books, plays, paintings, photographs, illustrations, musical compositions and computer programs. A copyright generally conveys the exclusive right to copy, distribute, publish, perform and create derivative works of the original work of authorship from the moment such work was created. Registering a copyright with the relevant country’s copyright office provides certain benefits vis-à-vis third parties, including public notice of ownership, the ability to bring a claim in court for infringement and the ability to obtain an injunction to prevent unauthorized use of the work. 

Patents: Patents provide its owner the right to exclude others from making, using, selling, offering to sell and importing the patented invention. The most common types of patents are the utility and design patents. Patentable inventions that may qualify for a utility patent include an apparatus, method or composition of matter. Design patents protect nonfunctional ornamental features. Patent rights are established by virtue of their registration (not through use of the invention). If you would like to learn how to file patent applications in multiple countries in a coordinated manner, you can read Brown Rudnick’s article on the topic by clicking here. 

Trademarks: A trademark is a word, phrase, symbol, design or a combination thereof, that identifies the source of goods or services. Trademark rights generally provide the owner with the ability to prevent a likelihood of confusion between its mark and others. Trademark rights are established by use of the mark; however, registration is encouraged for wider geographic recognition and enforceability. To learn more about how to protect your trademark rights globally, you can read Brown Rudnick’s article on the matter by clicking here.

Trade Secrets: Trade secrets are rights in confidential information. A trade secret is generally viewed as confidential information that is commercially valuable, not widely known and subject to affirmative steps to maintain its confidential nature. Rights in trade secrets arise from a course of conduct, not governmental registration.

Intellectual property rights and regimes differ by country and are generally jurisdictional in nature. Intellectual property registered in a particular country provides enforcement rights only in that country. Notwithstanding that no single regime exists on a global basis, there are a number of treaties that help create reciprocal rights recognition for participating members such as the Berne Convention for the Protection of Literary and Artistic Work (“Berne Convention”) and Paris Convention for the Protection of Industrial Property (“Paris Convention”). 

The Berne Convention generally provides that literary and artistic works shall be protected in foreign countries other than the author’s country of origin to the same degree the foreign country protects works of its own national authors. The Paris Convention applies to industrial property, including patents, trademarks, and industrial designs, and allows a copyright holder to enforce its rights outside of its home country where the copyright is registered. The Paris Convention also allows for a patent filing in one member country to establish priority for the filing in another member country. To date all Latin American countries are members of the Berne and Paris Conventions.

Maximizing the value of intellectual property rights include verifying the potential for foreign rights, preferably at the time of creation, and securing such rights, as well as leveraging value through properly structured licensing agreements.

If you would like to learn how to build a portfolio of intellectual property rights and optimize the economic value of such rights on a global basis, please let us know. Our experienced team of lawyers can help you develop a tailor-made strategy considering the laws of all jurisdictions involved.