Law Times

PAGE 12 FOCUS July 25, 2011 • law Times Private investigators integral in intellectual property investigations BY DARYL-LYNN CARLSON For Law Times tual Property Offi ce due to the fact that another party claims to have ownership can come to a quick resolution once a pri- vate investigator gets involved. In Canada, there are often P discrepancies before the of- fi ce about who owns a patent or trademark and whether the party that made the initial fi l- ing for ownership was indeed the founder or if a former em- ployee stole it and brought it to a competitor. Lawyers who deal with intel- lectual property say a thorough investigation by a private in- vestigator can resolve any dis- crepancy raised by the offi ce. Justine Whitehead, a partner atents and trademarks that are challenged by the Canadian Intellec- at Stikeman Elliott LLP's Ot- tawa offi ce whose practice is fo- cused on intellectual property law and international trade, says that when a trademark or patent is challenged, it's best to have a private investigator gather infor- mation about the fi le in the event the matter heads to court. "An investigator is necessary if there is a discrepancy that could end up in the court as they can confi rm everything," she says. Whitehead notes both pat- ents and trademarks are fre- quently the subjects of chal- lenges, in some cases by third parties that have launched a similar application. "Th ere can be clients that will face a chal- lenge to their intellectual prop- erty rights and in some circum- stances they do end up going to court. So in those types of cases, you do have to make sure you have gathered all of she'll deploy a private investiga- tor to verify whether they have a legitimate argument. "Th ere are many diff erent types of chal- lenges to a patent or trademark that can be cleared up by private investigators," she says. "Th ey are very effi cient fact gatherers and can help in all types of cases." Whitehead adds that there are instances where an inves- tigator isn't necessarily integral to resolving a challenge if it's unlikely that the case will end up in court. Th ere are a number of dif- Protecting a patent or trade- mark can be particularly chal- lenging for small businesses, says David Debenham. the facts." In many instances where a trademark or patent is challenged by third parties, Whitehead says ferent scenarios related to an alleged patent or trademark infringement that come to the offi ce's attention. In some cir- cumstances, a patent or trade- mark may be subject to chal- lenge in the event a piece of intellectual property is import- ed into Canada or exported abroad, a situation that would require a lawyer to get involved in order to assert that there was in fact a registration here. In those types of scenarios, pri- vate investigators are integral to confi rming the background of the patent or trademark. In order to enable a private investigator to resolve a dispute quickly, lawyers can assist by conducting thorough research into a client's patent or trade- mark to seek out any compet- ing products; look into any employees who have either left the company or have access to the intellectual property; and check for suspected infringe- ments that could be vague but ultimately problematic should a challenge arise. David Debenham, a partner HELP YOUR CLIENTS TAKE CHARGE OF THEIR FINANCIAL FUTURE at McMillan LLP's Ottawa of- fi ce whose practice relates to the intellectual property and litigation fi elds, says protect- ing a patent or trademark can be particularly challenging for a small business. "Th e actual registration process is pretty cut and dry, but it's what can happen afterwards that can be arduous for a small business," he says. Th is is due to the fact that small businesses have fewer resources. Once the pat- ent or trademark is registered, any large company in the same industry could pick a fi ght given the competitor's limited means. "Th at's where private inves- tigators can be important in conducting an investigation and even surveillance to assist a small business that has reg- istered intellectual property," Debenham says. While Debenham says there NEW EDITION WEALTH PLANNING STRATEGIES FOR CANADIANS 2012 CHRISTINE VAN CAUWENBERGHE Your clients are at different stages in their lives and they rely on you to give them the right financial and tax advice. How can you be ready with the right answers for the wide variety of life situations that you will encounter? Wealth Planning Strategies for Canadians 2012 is the answer. This convenient resource is organized by life stage – so you are ready with quick answers as soon as your client walks through the door. NEW IN THE 2012 EDITION • Further explanation of the various planning strategies • All relevant changes to the provincial and federal tax, estates and family property legislation • Up-to-date tax rates, tax credits and social assistance rates ORDER # 983592-62351 $60 Softcover July 2011 approx. 720 pages Annual volumes supplied on standing order subscription 978-0-7798-3592-8 Shipping and handling are extra. Price subject to change without notice and subject to applicable taxes. are no special skill sets required for intellectual property in- vestigations, they can be fairly complex for private investiga- tors due to the background information required should a matter go to court. As well, there are many cases of intellectual property theft that happen in workplaces of all sizes, a situation that re- quires private investigators to monitor competitors and their licensees, distributors, and im- porters. Deploying investigators in AVAILABLE RISK-FREE FOR 30 DAYS Order online at www.carswell.com Call Toll-Free: 1-800-387-5164 In Toronto: 416-609-3800 intellectual property matters is becoming more common due to the extraordinary value of a patent or trademark that can serve as a windfall for a compa- ny. As a result, many businesses hire investigators to search for infringements of patents and trademarks to protect their re- spective intellectual property and catch any copycats, says Debenham. "It can be very cloak and dagger in the area of intellectual property but it's a fi eld that in- vestigators are becoming more a part of because there is no other way to protect an owner from an infringement." Untitled-6 1 www.lawtimesnews.com 7/19/11 1:57:42 PM

• Cover
• Estates Ruling
• Maverick Retires
• Focus On Forensics/Private Investigators