Legal Question in Intellectual Property in California

Intellectual property and outsourcing?

What legal avenues for protecting intellectual property are available to US companies who are outsourcing software to countries like China, India, Russia and the Ukraine?

Right now I have standard NDA and licensing agreements with my US based contractors, which have some enforcement and damages clauses but how do these hold up with in other countries? What do I need to do to protect my source code from appearing out on the internet somewhere?


Asked on 4/25/07, 9:00 pm

1 Answer from Attorneys

Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Re: Intellectual property and outsourcing?

This is not an easy problem, and the standard answer would be that your business needs to retain an intellectual-property attorney with international experience, but if you can't afford that, a free but time-consuming approach would be:

(1) contact a consular officer of each country through their Washington embassy, or their consuls general in SF or LA for the larger countries, and ask to talk to their trade or IP officers. Ask for brochures or anything explaining their policies, which trade or IP treaties and conventions they adhere to, and anything else bearing on your concerns.

(2) then, do a checkup on the credibility of what they tell you by contacting various US federal agencies whose province it is to protect and encourage US companies in foreign trade. I used to know exactly which office in the Dept. of Commerce were charged with encouraging exporting and guaranteeing US overseas ventures, but my last foray into this was several decades ago. All I can say is I'm sure someone in Commerce runs a free advisory service the purpose of which is to tell you what's safe, what's risky, and what's a guaranteed loser.

Oh, by the way, a careful Google search will turn up worthwhile articles on the relative safety and special problems of doing business with just about any country. Some of the referrals may be to sites where you have to pay for a report. It may be worth you money; I don't know.

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Answered on 4/26/07, 12:44 am


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