Law Times

Law Times • apriL 18, 2016 Page 13 www.lawtimesnews.com family law Untitled-4 1 2016-04-12 3:07 PM Course Leaders David Di Paolo, Partner, Borden Ladner Gervais LLP Paul Mingay, Partner, Borden Ladner Gervais LLP Managing & Avoiding Securities Lititgation FULLY ACCREDITED IN-CLASS PROGRAM & LIVE WEBINAR Toronto, June 1 • Webinar, June 1 REGISTER BEFORE MAY 6 AND SAVE $300 To register and learn more visit www.lexpert.ca/cpdcentre SWIMMING WITH THE SHARKS IN THE SECURITIES MARKET INSIDER TRADING | SHAREHOLDER ACTIVISM | CLASS ACTIONS ntitled-5 1 2016-04-13 10:42 AM Think global when it comes to intellectual property BY MICHAEL MCKIERNAN For Law Times I ntellectual property boutiques need to look beyond Cana- dian borders in order to keep up with their global clients, according to lawyers in the field. "It's critical to understand the legal landscape and commercial pressures on your clients, and Canada is just one part of the world IP network," says Tim Gil- bert, the founder and managing partner of intellectual property boutique Gilbert's LLP. At Smart and Biggar's Ottawa office, partner Steven Garland says a significant chunk of the firm's internal continuing legal education is focused on deci- sions, issues, and procedures emerging from jurisdictions outside this country. "IP rights are national in terms of scope, so it's common to have clients looking to have some sort of protection beyond Canada," Garland says. "It's im- perative that we're up to speed obviously with what IP protec- tion is available in Canada but also that we know what you can get elsewhere. We also need to know the differences between those jurisdictions in terms of what you can and can't protect." Garland says it also helps build confidence in his foreign clients when they come to him for Canadian advice, and he is able to frame the issues here in contrast with the company's ex- periences in other, more familiar markets. "Businesses typically have global IP strategies, and we're here to support it," Garland says. However, when the clients are Canadian businesses looking outwards for expansion, Cyn- thia Rowden says not enough of them think globally early. "Canadian businesses don't seem to appreciate the benefits of IP protection generally. I'm not sure why, but we lag behind in terms of trademark and pat- ent applications compared with other major jurisdictions," says Rowden, a Toronto-based part- ner at Bereskin & Parr LLP. "Some businesses understand the value of having an interna- tional IP portfolio, but I would like to see more thinking earlier about investing in one." For his tech startup clients, Gilbert says his attention turns immediately abroad. "From a very early stage, we're often looking at U.S. patent file histories. We also look at Euro- pean oppositions, because they have a much more developed op- positions practice there," he says. According to Rowden, who specializes in trademarks, many companies prefer to lay the groundwork for an expansion before turning their minds to IP rights abroad. But by then, it's of- ten too late. "Don't plan for where you're going to be tomorrow, plan for where you're going to be in three years time. The cost of trying to solve a problem that arises in the future is way more than the cost of filing a trademark application now," she says. "Anyone who works with clients who trade in- ternationally can tell you stories about putting a toe in a market, only to find that someone has al- ready applied for the same mark. It's endemic in some countries." Rowden says trademark trolls, who get in first with trademark registrations before selling them back at large profits to established brands, are a significant problem in markets such as China, and they could prove a growing issue in Canada following the removal of the use requirement for trade- mark registration. For those with less nefarious motives, Rowden says a trade- mark registration is a good way to put the world on notice that they have IP rights they intend to protect. "In most places, unlike Canada, you can only get rights through registration. That is true in most of Europe, Japan, and China, among others," she says. When it comes to actually implementing a global IP strat- egy, Gilbert says boutiques such as his are able to have their pick of international partners to do the groundwork in foreign ter- ritories. "As a boutique, we're more conf lict-free. We try to partner with other boutiques that share a similar approach," he says. "It really allows us to hone in on lo- cal expertise." Garland says it's not unusual for larger clients to have corre- sponding litigation underway in many jurisdictions at once, all concerning identical or similar patents, which requires a great deal of co-ordination between counsel across international borders. "What you do in one coun- try can have an impact on how things play out in another coun- try, so it's very important that all litigation counsel are on the same page," he says. LT Cynthia Rowden says many companies pre- fer to lay the groundwork for an expansion before turning their minds to IP rights abroad.

• Cover