Law Times

PAGE 12 FOCUS January 30, 2012 • Law Times International patents can be risky Filing everywhere not always best option for companies BY DARYL-LYNN CARLSON For Law Times F iling a patent or a trade- mark in a foreign country can be risky as the lawyer may have to travel abroad and face other complications should it be subject to challenge in court. The result is an imperative to file only in countries that will en- able the client's company to pros- per and avert any legal issues that could lead to litigation. Neil Milton, a lawyer at Mil- tons IP in Ottawa, affirms that there can be many difficulties in some countries. He says that in some jurisdictions, the courts are either incredibly slow or corrupt but notes that it's wrong to make broad assumptions about where that may be the case. Sometimes courts in Canada and the United States aren't the quickest, cheapest or most transparent either. "The two considerations are, does it matter to file in that coun- try and is it worth the time and expense?" he says. "This is more of a surgical exercise than a broad- brush exercise as you need to file in countries that are important to you and it depends on the nature of your business." Milton says he advises clients to consider where their patents will be in 20 years based on their economic prospects and where their business will be at that point. "You have to look 20 years out for patents. For instance, challeng- ing legal environments such as Indonesia, Malaysia, the former Soviet Union — these are rapidly growing, rapidly changing juris- dictions, and IP may be much more valuable there then than it seems now. There are no easy an- swers and the money you might have to pony up if it goes to court may be substantial." There can be different considerations for patents and trademarks, Milton adds. "With trademarks, local branding considerations and assessment of pre-existing lo- cal marks is very important. Very oſten, a product will be sold under a different name around the world. With pat- ents, the key is usually the nature of your business and where profitable use of the invention is most likely. For instance, semiconductors are usually made in totally differ- ent countries from where oil refining takes place." Milton points out that while these concerns may be new to Canadian export- ers, companies coming into Canada have had to deal with similar issues for years. For example, well-known U.S. re- tailer Target is having difficul- ties bringing its name to Can- ada because another company has owned the Target Apparel mark in Canada for years. Wal-Mart, Of- fice Depot, and others have faced similar problems. Ultimately, Milton says, "I try to move people as quickly as pos- sible from the generic thinking that they should file everything outside Canada to the specifics of what they should file in which 'With patents, the key is usually the nature of your busi- ness and where profitable use of the invention is most likely,' says Neil Milton. countries. You have to try to max- imize protection within a given budget to maximize the return on investment and for that, care- ful planning using knowledge of both the law and the plans of the business is absolutely crucial." Eileen McMahon of Torys LLP in Toronto agrees that inter- national patents and trademarks can be challenging in some countries. "Europe is the most problematic region as you're dealing with possible chal- lenges at the patent office and your competitors tend to get involved before the is- suance," she says. In some instances, Eu- ropean competitors in the company's industry or sector will challenge the intellectual property in order to get an advantage over a business based in Canada. "Once the patent or trademark is issued, that's when you may get into litigation and whether your competitors take a run at the patent or you try to assert the patent before your competi- tors," says McMahon. Earlier this month, the European Patent Office post- ed a news release noting it was setting up an economic and scientific advisory board to address important patent- related issues. "Beyond its core business of search, ex- amination, and grant of patents, the EPO has a strong interest in the broader economic and social ramifications of the patent system, especially its impact on innova- tion and economic growth," said patent office president Benoît Bat- tistelli. "The board will advise the office on what studies to conduct and offer guidance on their evalu- ation and implementation." 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