Service: Trademarks

Are you utilizing your IP to obtain financing and grow your business?

Posted on by Debbie Malek

Intellectual property (IP), including patents, industrial designs and trademarks, is an under-utilized business tool for small medium enterprises (SMEs).  Regardless of company size, IP may be used to:

  • Obtain financing
  • Generate revenue through licensing opportunities
  • Protect and/or expand market share

This is highlighted in the 2019 IP Canada Report from the Canadian Intellectual Property Office in the section entitled “[t]he impact of IP on financing and growth of small and medium enterprises” (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04682.html). In particular, the 2019 IP Canada Report summarized the results of ISED 2017 Survey on Financing and Growth of Small Medium Enterprises.  The following points are of particular interest:

  • While more than half of Canadian SMEs are aware of patents, very few have patents.
  • The proportion of Canadian SMEs holding at least one patent increases as size of SMEs increases.  In particular, 3% of SMEs having 20 to 99 employees hold at least one patent while 15% of SMEs having 100 to 499 employees hold at least one patent.
  • Canadian SMEs aware of IP or holding formal IP obtained more financing as compared to SMEs not aware or not using IP.
  • Canadian SMEs aware of IP or holding formal IP increased domestic and international market expansion as compared to SMEs not aware or not using IP.
  • Canadian SMEs aware of IP or holding formal IP increased growth as compared to SMEs not aware or not using IP.

It is important to start a formal conversation about some forms of IP at the outset of your business, even if you don’t have the funds to invest in it right away. A strategy should be devised to plan for it in the future and allocate some budget to properly protect your IP. An intellectual property professional can help you determine what IP is appropriate for your business and how much to budget for it. Intellectual property, especially for start-ups or an SMEs, is considered to be one of its biggest business assets and as such should be treated with extreme care. An IP professional can help you maximize business opportunities out of your intellectual property if the right strategy is in place.

For more information please contact:

Kay Palmer, Ph.D., Senior Patent Agent
T: 613-801-0452
E: kpalmer@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

Canada’s Trademark laws will see major changes in June 2019

Posted on by Debbie Malek

It has been announced on November 14, 2018 in the Canada Gazette (Part II, Volume 152, Number 23) that amendments to the Canadian Trade-marks Act will be coming into force on June 17, 2019. On the date of this announcement, the new Trademarks Regulations, which also will be coming into force on June 17, 2019, have been published. By virtue of these changes, there will be notable impacts on Canadian trademark regime in many aspects including registration process, and Canadian Trademark law will be in line with major international trademark treaties such as the Singapore Treaty on Law of Trademarks (Singapore Treaty), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).

Some of the important changes to Canadian Trademarks law are summarized below:

  • Expanded definition of “Trademark”: The definition of “Trademark” will be expanded to include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”;
  • Increased Government Filing and Renewal Fees: Filing fees and renewal fees will increase and will be charged on a per class basis:
    1. The Government filing fee will be $330 for the first class and $100 for each additional class (currently the fee is $250, regardless of how many classes you file in).
    2. The Government renewal fees will be $400 for the first class and $125 for each additional class (currently the renewal fee is $350, regardless of how many classes you renew in). For  trademarks with multiple classes, there is a significant cost savings to renew before June 17, 2019, and even for trademarks with only one class of goods and services there is still a small saving of $50.To illustrate with numbers: the cost of renewing a trademark with 6 courses after June 17, 2019 will be: $400 (1st class) + ($125 x 5 additional classes) = $1,025 in government fees vs. $350 in government fees if renewed before June 17, 2019.
  • Adoption of the Nice classification system: Goods and services in a trademark will need to be classified according to the Nice Agreement classification system, as in many other countries;
  • Date of first use will no longer be required: Identifying the date of first use of a trademark in Canada will be removed from the application;
  • Declarations of use not required for a “proposed use” application: Applicants will no longer be required to file a declaration of use in order for the application to proceed to registration;
  • Ability to divide and merge applications: A trademark application can be divided to expedite the registration process, especially when there is opposition to certain goods or services. Divided applications and registrations can be merged later;
  • New registration period: The registration period for trademarks will be shortened from 15 years to 10 years and the renewal of a trademark registration will be required every 10 years. Terms for existing trademark registrations will remain 15 years; and
  • International filing through a single application: Canada will be joining the Madrid Protocol. As such, will be able to file a trademark application in multiple countries (that are members of the Madrid Protocol) through a single application.

Recommendation given the new legislation: if you have clients who are considering filing trademarks, especially multi-class applications, there could be significant cost savings if filed before June 17, 2019. As mentioned above the current Government Fee for filing regardless of how many classes you file in is $250, however, after June 17, 2019, the government filing fee will be $330 for the first class and $100 for each additional class. The same is applicable for renewals, it is recommended to renew before June 17, 2019, especially multi-class applications, as renewal fees will be going up, $400 for the first class and $125 for each additional class. Even if you renew now, before June 17, 2019, the new term (10 or 15 years) will be calculated from the actual renewal due date NOT when you paid the renewal fee.

For more information, please contact:

Randy Marusyk, Co-Managing Partner
T: 613-801-1088
E: rmarusyk@mbm.com

Co-Author: Hyun Woo Choi, Articling Student

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

The Impact of Changes to Canada’s Trademarks Act on the Pharmaceutical Industry

Posted on by Debbie Malek

The Canadian trademark regime is set to experience a significant overhaul once major amendments to the Trademarks Act take effect. The amendments are expected to come into force in 2019 and are designed to allow Canada to implement the Nice Agreement, the Singapore Treaty and the Madrid Protocol. While the amendments will have an impact on all Canadian trademark owners and any business seeking trademark protection, they will present unique challenges to the pharmaceutical industry specifically.

Registration Regardless of Use

One of the most significant changes to the Trademarks Act involves removing the requirement that a trademark must be used prior to registration. Under the new practice, a trademark application will automatically proceed to registration upon expiration of the opposition period. Currently, it is possible to file a trademark application on the basis of “proposed use” or “intent to use”. However, an application based on proposed use cannot proceed to registration until the applicant files a declaration attesting to use of the mark in Canada.

Companies seeking to protect a proposed drug name not only have to comply with the trademark registration process, but also have to seek the approval of any proposed drug name from Health Canada as part of drug approval process, in accordance with the Food and Drug Regulations. Health Canada’s assessment of a drug name is performed from a health and safety perspective. Factors considered by Health Canada include the similarity of existing and discontinued drug names and the potential to mistake one drug name for another, resulting in medication errors. There is no guarantee that a drug name used and allowed internationally will be approved for use in Canada.

The Health Canada approval process can be lengthy and there can be no sale of the product – and consequently no use of the drug name – while approval is pending. This means that pharmaceutical applicants are often forced to request multiple extensions of time to file declarations attesting to use of a mark, and may even lose their applications if there is no use of a mark prior to the final deadline to file the declaration.

The new trademark laws will allow owners of pharmaceutical trademarks to obtain registered trademark protection prior to the completion of the drug approval process, thereby eliminating the need to file (or request extensions of time to file) declarations attesting to use. The result is a more rapid and streamlined trademark registration process.

That said, use will remain an important consideration for trademark owners since a registration will be susceptible to a non-use cancellation proceeding beginning three years after the date of registration. If there is no use, and an owner cannot establish “special circumstances” justifying the lack of use, the registration will be cancelled. However, it is possible that non-use due to pending Health Canada approval may be considered a “special circumstance” sufficient to justify maintaining the registration despite no use of the mark in Canada.

Non-Traditional Trademarks

Current Canadian trademark law permits registration of a limited number of non-traditional trademarks such as colour, shape and sound. The amendments to the Trademarks Act will allow applicants to seek trademark protection for a wider variety of non-traditional trademarks including holograms, scents, tastes and textures. However, with the changes will come an additional level of scrutiny as it will be necessary to show distinctiveness of a trademark at the date of filing if the Canadian Trademarks Office does not consider the mark to be inherently distinctive. At present, there is no requirement to prove distinctiveness of marks consisting of colour, shape or sound.

To prove distinctiveness of a mark, an applicant will have to file affidavit evidence and/or survey evidence establishing the reputation and distinctiveness of its trademark across Canada. If proof of distinctiveness is only demonstrated in parts of Canada, the resulting registration will be restricted to those provinces and/or territories in which distinctiveness has been established.

Pharmaceutical companies have historically faced unique challenges when seeking registered trademark protection of colour, shape and sound marks. The recent case Canadian Generic Pharmaceutical Association v Boehringer Ingelheim Pharma Gmbh & Co. KG (2017 TMOB 47) confirms the additional hurdles faced by the pharmaceutical industry in proving distinctiveness of a product having a particular shape and colour. Not only must it be shown that an ordinary consumer associates the trademark (without markings) with a single source of manufacture to a significant degree, but that association must be established for a substantial body of consumers which, for pharmaceutical products, consists of physicians, pharmacists and patients.

Given that there is presently no requirement for proving distinctiveness of colour, shape and sound marks, it is advisable for trademark owners to consider seeking protection now, while the more lenient trademark regime remains in effect.

International Registration of Trademarks

Finally, the amendments to the Trademarks Act will allow Canada to adhere to the Madrid Protocol, an international trademark registration system. The Madrid Protocol simplifies the filing of corresponding trademark applications in foreign countries once an applicant has a home country application or registration.

Currently, Canadian companies seeking to obtain registered trademark protection in various countries outside of Canada must file trademark applications in each jurisdiction. With the implementation of the Madrid Protocol, it will be possible to file corresponding trademark applications in multiple foreign jurisdictions and countries through a single “international” application. Similarly, foreign applicants seeking international trademark protection will have the opportunity to designate Canada under the Madrid Protocol.

Canada’s adoption of the Madrid Protocol will permit trademark owners, including those in the pharmaceutical industry, to realize the advantages of this simplified international filing system. Not only will applicants have easier access to trademark protection in foreign jurisdictions but the more efficient, centralized application process will result in financial savings.

Summary

The upcoming changes to Canadian trademark law, including the implementation of the international treaties, will help to modernize Canada’s trademark system and bring the country in-line with international standards. Trademark owners should ensure that they understand the implications of the new legislation and adjust their trademark protection strategies accordingly.

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: Erin Creber, Associate, Trademark Agent

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

The Impact of Expanded Regulations Under CETA on Geographical Indications and Your Brand

Posted on by Debbie Malek

Trademarks are a part of our everyday life. A trademark protects a combination of letters, words, sounds or designs that distinguishes one’s goods or services from those of another in the marketplace. There are specialized trademark rules, including those relating to Geographical Indications (“GIs”) that have the potential to impact specific industries. For example, recent changes in GI law could significantly alter how a wine, spirit, agricultural product or food producer approaches their branding and marketing efforts.

A GI[1] is an indication that identifies a wine or spirit, or an agricultural product or food, as originating in a specific territory. The GI must also be associated with a particular quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that is attributable to its geographical origin. Essentially a GI can add value to your product as it certifies that the product possesses certain qualities or reputation, because of where the product was created. We are all familiar with some common GIs including Champagne (an alcoholic drink produced from grapes grown in the Champagne region of France); Port (a Portuguese fortified wine produced exclusively in the Douro Valley in the northern provinces of Portugal); and Cognac (a variety of brandy named after the town of Cognac, France, produced in the surrounding region).

Prior to Canada-European Union Comprehensive Economic and Trade Agreement (“CETA”)[2], which came into force on September 21, 2017, GIs were used to protect only wines and spirits. CETA implementation has resulted in amendments to the Canadian Trademarks Act (“Act”) that expanded the protection afforded by the Act to a wider range of products to which GIs (including translations of these GIs) can now apply. Certain agricultural products and foods are now afforded the same protection. The amendments have automatically granted GI status to a number of products including Brie de Meaux, and Huile d’olive de Haute-Provence, providing them with legal recognition, and exempting them from objection and cancellation proceedings.

Certain more commonly used GIs have been afforded a more limited type of protection (such as Feta, and Asiago).[3] Users of these particular marks will be exempt from cancellation proceedings if they have been using the mark for 10 years (starting before October 2013), have previously had indications granted, or currently have an applied-for or used trademark on file. As a producer of these products, there is some risk in relying on this exemption. The specific GI use must qualify as trademark use as defined by the Act, otherwise you will not qualify for the exemption. You will also be able to continue to use the more common GIs if they are accompanied by a qualifying term such as “kind”, “type”, “style” or “imitation”.[4] The geographical origin must also be clearly displayed on the packaging in which it is distributed.

A third category of commonly used GIs such as Parmesan, Black Forest Ham, and Valencia Orange can be adopted, used or registered as a trademark without penalty.[5] Additionally, these GIs can be used in comparative advertising that is not placed on labels or packaging, or in the instance that consent was given by the ‘Responsible Authority’.[6]

The implementation of CETA has also provided the Federal Court with exclusive jurisdiction to order the removal of a GI, a procedure which did not previously exist. Moreover, there is a process by which a ‘Responsible Authority’ can apply to have a new GI added to the GI List[7] and includes the following steps:

1. Filing a request with the Trademark Office;

2. Trademark Office reviewing your request;

3. Trademark Office putting out public notification of the GI;

4. Going through an objection proceeding (if a proceeding is initiated[8]); and

5. Entering the new GI on the Official GI list.

If you reference a GI on any of your products, it is important you understand how these rules can impact your business. Contacting an experienced professional who can help you in this understanding could end up being the difference between protection of your brand, and the loss of it.

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: David Lotimer, Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

[1] Defined in Section 2 of the Trade-marks Act, R.S.C., 1985, c. T-13, (the “TM Act”).

[2] See http://www.international.gc.ca/gac-amc/campaign-campagne/ceta-aecg/index.aspx?lang=eng for additional information on the Comprehensive Economic and Trade Agreement.

[3] See Section 11.15 and Schedule 6 of the TM Act.

[4] See Section 11.17 of the TM Act.

[5] See Section 11.18 of the TM Act.

[6] Defined in Section 11.11(1) of the TM Act.

[7] View the current list at http://www.ic.gc.ca/cipo/listgiws.nsf/gimenu-eng?readForm.

[8] See Section 11.13 of the TM Act.

Intellectual Property Licensing: A Win-Win Agreement

Posted on by Debbie Malek

There are several benefits associated with protecting your valuable intellectual property (‘IP’) through registration. Owners often view registration of their patents, trademarks, copyright and other IP as a way to prevent third parties from using their proprietary idea, brand name or computer code. This is a valid consideration; however it is not the only benefit to an IP owner.

Licensing IP can be a very valuable additional income source to a business, and can be the conduit by which lucrative partnerships are created.

The World Intellectual Property Organization (‘WIPO’) categorises a licensing agreement as “a partnership between an intellectual property rights owner (licensor) and another party who is authorized to use such rights (licensee) in exchange for an agreed payment (fee or royalty).”[1] In this way, a licensor is able to obtain monetary gain from his or her IP by providing permission to a licensee to use that IP. The specifics of this permission can be particular to suit the needs of the parties.

Some factors to consider include:

Exclusivity – a license to use IP may be exclusive to one licensee. Exclusivity is often viewed favourably by a licensee as it provides surety that other competitors will not be able to use the IP for their own business purposes. Alternatively, the license agreement may stipulate that the license to use the IP is non-exclusive. This may be favourable to the licensor as it provides them with an opportunity to enter into several different licensing relationships using the same IP, potentially deriving multiple income sources for use of the same technology.

Jurisdiction/Territory – a licensing agreement can be jurisdictionally specific, in other words, you may select the specific territory, region, area or country in which the license will be valid. Some companies elect to negotiate a worldwide license allowing the licensee more freedom to use the IP in the jurisdiction of their choice. Others limit the IP use to a specific country in order to prevent the licensee from entering into their own market.

Transferability/Sublicensing – it is possible for a licensor to provide a licensee with the ability to sublicense the IP themselves. The licensor may require that such sublicensing be approved, and structured such that sublicense fees will be paid to the IP owner. The licensor may also elect to provide a non-transferable license, which allows the IP owner to keep complete control of which parties are able to legitimately use the IP.

Term – the term of the licensing agreement can be a defined length, renewable, based upon other conditions (such as licensing fees, production targets, licensor election, etc.), or perpetual. A conditional term can act to motivate a licensee to achieve certain business targets that ultimately provide financial benefit to both the licensee and licensor.

Fees – license fees come in many forms including upfront payments, recurring annual or monthly fees, royalty based, or a combination of these options. It is possible to create a license fee payment structure that mitigates risk and rewards strong performance, or penalizes poor performance. A fee structure (like term structure) can act to motivate a licensee towards success in their own business.

Field of Use –the rights granted to use the IP may be limited to a specifically defined field. In this way the licensee is only able to use the IP for a particular commercial purpose and the licensor will maintain the right to directly exploit or license the same IP in a different field of use.[2]

Type of Licensed IP – the type of IP licensed will also impact how the license agreement is developed. The permitted use and control of a patented technology can be significantly different to the permitted use and control of a trademark, and the obligations on each of the parties to the agreement need to reflect the particular licensed IP.

Ownership of Licensed IP Developments – once a licensee is able to use a licensor’s IP, it is important to consider how developments and improvements to the licensed IP will be controlled, particularly when it comes to ownership. It is possible to impose conditions upon the license that require all developments of the licensed IP to be owned jointly by both parties to ensure the spoils of newly created IP is realized equally.

The benefits of IP licensing are several and apply to all parties involved. A licensor may be able to form partnerships to expand the reach of their own business, or may secure an additional income stream. A licensee may expand their business by utilizing technology they were not previously able to use. There are many other options to further address the factors discussed above, and the specifics can be manipulated to better suit each particular licensing relationship.

When developing an IP License Agreement, consider consulting a trained IP specialist with experience negotiating and formulating these agreements. With his or her help, it is likely both you as an IP owner and the licensee of your IP will find yourselves part of a win-win agreement.

 

For more information, please contact:

T: 613-567-0762
E: trademarks@mbm.com

Author: David Lotimer, Associate

 

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

 

[1] ‘Licensing of Intellectual Property Rights; a Vital Component of the Business Strategy of Your SME’, World Intellectual Property Organization, http://www.wipo.int/sme/en/ip_business/licensing/licensing.htm.

[2]‘Fact Sheet – Commercialising Intellectual Property: License Agreements’, European IPR Helpdesk, www.iprhelpdesk.eu, November 2015.

 

Regaining Trademarks That Were Lost in Translation in China

Posted on by Debbie Malek

In China, international companies and celebrities have often found themselves on the losing side in trademark or name right disputes. One reason is that an English word can be translated in Chinese either phonetically or conceptually, and there are usually multiple Chinese characters with the same pronunciation to choose from. Another reason is that the Chinese trademark system is a first-to-file system same as in Canada, but prior-use is not a reasonable ground to displace a registered trademark.

The original English names (e.g. Jordan) may be hijacked by local companies by using variation forms of the phonetics in English (e.g. Qiaodan) or the translation in Chinese characters (e.g. 乔丹). These variations are difficult to distinguish from the original names by local customers since the majority of the Chinese population does not speak or read English, especially seniors and people living in rural areas. For international companies and celebrities, the Chinese courts need to be convinced that their trademarks and names are recognized as “famous”, which is a tremendously difficult threshold to establish.

China has started taking intellectual property rights more seriously because Chinese companies, such as Huawei, Lenovo, and Haier, are becoming powerhouses of valuable intellectual property. In recent trademark cases, we have observed a trend that the Chinese courts are now more willing to consider the brand reputation developed by previous use outside of China. Below are a few notable cases:

Michael Jordan v Qiaodan Sports Co. Ltd.

In China, the retired basketball superstar Michael Jordan is known as “乔丹”, the most common Chinese translation of his last name. In 2001, a local sportswear manufacturer Qiaodan Sports registered a number of trademarks including “乔丹” and “QIAODAN”. Michael Jordan sued for infringement of his name rights after finding that Qiaodan Sports brought in $276 million in revenue in 2012. The trial court ruled that “Jordan” is a common English name which is not uniquely associated with Michael Jordan. Furthermore, the use of one version of the English translation does not necessarily constitute infringement. Michael Jordan later on appealed this decision.

In December 2016, China’s Supreme People’s Court overturned earlier rulings. The court found that a strong link between “乔丹” and Michael Jordan personally was established in China before Qiaodan Sports had maliciously registered “乔丹”. The company was fully aware of Michael Jordan’s reputation in China and enriched by passing off. Therefore, the Supreme People’s Court invalidated the “乔丹” trademark registration. Meanwhile, the court held that the link between “QIAODAN” and Michael Jordan has not been established, as naturally Michael Jordan would not have used “QIAODAN” in any manner.

New Balance v New Boom, New Barlun, and New Bunren

In 2017, the Suzhou Intermediate People’s Court has ordered five shoe manufacturers using the name New Boom and the signature slanting “N” logo to pay $250,000 in fines to the state and an undetermined amount to New Balance. Another Chinese court had awarded New Balance $550,000 against companies making New Bunren brand shoes. We are still waiting for the outcome of an outstanding case against the brand New Barlun.

Most international companies do register their English brands when entering the Chinese market. However, what’s often forgotten, or deemed less important, is the registration of Chinese translations. This overlooking may cause significant economic losses eventually as a registration for the English words will not automatically extend to the Chinese translations.

Recent court decisions serve as encouraging precedents to international brand owners. The Supreme People’s Court is more willing to consider all relevant circumstances, in particular the fairness and commercial value behind the name or trademark. It also worth to mention that the Chinese Trademark Office has granted preliminary approval for nine Donald Trump trademarks it had previously rejected. The key to success is to present sufficient evidence to establish the link between the original names and Chinese translations, and show bad faith on the part of the trademark squatter. Recent cases emphasize the need for international companies and celebrities to identify and register Chinese translations or transliterations of their trademarks and names as soon as possible, in order to ensure that they are protected against trademark squatters.

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613-801-1099
E: smiller@mbm.com

Co- Author: Yang Wang

 
This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation

 

Upcoming Amendments to the Patent Rules, Industrial Design Regulations, and the Trademarks Regulations

Posted on by Debbie Malek

The Canadian Intellectual Property Office (CIPO) has just announced that it will be conducting a series of consultations on proposed regulatory amendments to the Trademarks Regulations, Industrial Design Regulations and Patent Rules.

The amendments are being proposed to bring Canada’s intellectual property (IP) legal framework in line with international standards. In particular, Canada is in the process of joining five international IP treaties: the Madrid Protocol, the Singapore Treaty, the Nice Agreement, the Hague Agreement, and the Patent Law Treaty.

Amendments to the Trademarks Act, the Industrial Design Act and Patent Act were previously amended to comply with the requirements of these treaties. In order to complete the changes to Canada’s IP legal framework, the accompanying Regulations and Rules must also be amended.

CIPO will be consulting with the IP legal community starting on June 19, 2017 for the Trademarks Regulations and the Industrial Design Regulations. Consultations regarding the Patent Rules are scheduled to start in early August 2017. The proposed amendments will be disclosed during this consultation period, and there will be an opportunity to ask questions and submit questions or comments.

Amending the IP Rules and Regulations is the final step in a major makeover of Canada’s IP legal framework that will bring us closer to the developing international standards. From an IP owner’s point of view, these changes will make it more efficient to obtain patent protection in Canada based on foreign originating applications, and similarly will make it more efficient for Canadians to obtain foreign patent protection based on Canadian originating applications.

For more information, please contact:

T: 613-567-0762
E: general@mbm.com

Author: Etienne de Villiers, Of Counsel

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

In for a penny, in for a pound…

Posted on by Debbie Malek

I hear it all the time … “I can’t afford to protect my intellectual property.” Let me tell you that the reverse is true for a startup … you can’t afford NOT to protect your intellectual property! If you’ve decided to take the leap and embark on a start-up adventure, then you will want to do everything in your power to succeed.

Early stage companies are typically built on a great idea and a lot of hope. These companies have not yet had the opportunity to acquire tangible assets or to build significant sales revenue (if any!). Consequently, the value in these companies is often in their ideas and their ability to create products/services from those ideas. Potential investors and partners won’t take a second look at a company if those ideas are not protected, or protectable. The assumption is that all new companies have a great idea, however, investors and partners alike need to know that they will have a defensible competitive advantage over other companies before they join in developing and growing such early stage endeavors. It’s all about mitigating risk.

Market exclusivity typically requires strong intellectual property protection. But what does that mean for a start-up, with limited resources and a nascent technology? I have identified below four general areas of focus for valuable IP protection that are important to early stage companies.

Avoid costly complications:

  • Know the competitors’ IP so you know where or what the company has freedom to practice without risk of infringement;
  • Ensure that employees and contractors assign their IP rights to the company upfront;
  • Scrutinize all third party agreements, including so-called “standard” agreements (e.g., confidentiality agreements), to ensure that they do not restrict or damage the company’s IP rights
  • Teach employees about IP

Be proactive:

  • Create a working environment that fosters innovation
  • Identify inventions early and keep quiet until they are protected
  • Reassess IP regularly to ensure it remains consistent with the company’s commercial and business plans

Use appropriate IP protection:

  • Don’t rely solely on patents: consider trade secret protection and remember the value of brand protection through trademarks
  • With respect to patents, invest in quality applications rather than a lot of applications
  • Invest in IP protection in as many jurisdictions of commercial relevance as possible, while also considering strength of protection available in each jurisdiction

Look for opportunities to fund IP:

  • Government grants for startups that support IP expenditures
  • Monetize company IP (e.g., in non-commercial fields of use, or jurisdictions; or IP that has become irrelevant)

Finally, talk to your intellectual property advisor! For early stage companies in particular, it can be beneficial to select an advisor who can act as a virtual in-house professional, with a good understanding of the company’s business goals. This provides both the company and the IP advisor the opportunity to proactively and strategically grow the value of the company’s IP portfolio.

Ultimately, because of their limited resources, early stage companies may need to be even more tactical than large corporations in how they handle their IP. However, investing the time and money to ensure that the company’s IP is properly protected will pay dividends in the long run!

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Top Top