Law Times

Page 12 March 27, 2017 • Law TiMes www.lawtimesnews.com IP boutiques promoting international relationships BY MICHAEL MCKIERNAN For Law Times C anadian intellectual property law boutiques are touting their inter- national relationships as clients look to boost their global patent, trademark and in- dustrial design protection. The Canadian Intellectual Property Office's annual IP Canada Report, released in late 2016, revealed that IP filings by Canadians outside the country had risen by 35 per cent in the period between 2005 and 2014, far outpacing domestic filings by resident applicants over a similar time frame. "It's quite an impressive statis- tic," says David Schwartz, a part- ner in the Ottawa office of Smart & Biggar/Fetherstonhaugh. Schwartz, whose practice primarily covers patent law with a focus on biotechnology, phar- maceuticals and chemistry, says international rights are often high on the priority list for his Canadian clients. "I don't think I have a single client who would be interested in filing for IP rights in Canada only. Almost any applicant is going to have interests outside our borders," he says. "Canadian applicants are very outward- looking when it comes to intel- lectual property, as in all as- pects of their businesses. Many companies generate most of their revenues outside Canada, so they see the importance of protecting their rights in those places." Thanks to their proximity and size, the U.S. and the Euro- pean Union account for the bulk of the international concerns of his clients, Schwartz says, but it's not unusual for him to have to call on contacts in other, less prominent nations. "For example, I have certain clients that are involved in a very specialized field who are pursu- ing patent rights in Paraguay and Uruguay," he says. "We have relationships with patent attor- neys in those countries through our network of foreign col- leagues, and we will then work closely with our counterparts. "In countries like that, where we are less familiar with their laws, there will be some more preliminary questions about feasibility, but when you're deal- ing with the U.S. and the EU, it's a lot more routine because there's a lot of regular business back and forth," Schwartz adds. Despite the increasing global reach of Canadian businesses, Schwartz says, IP budgets have typically not expanded at the same rate, forcing his clients to prioritize certain jurisdictions for filing, and one of the coun- tries that the CIPO report sug- gests Canadians are ranking highly more often is China. Between 2005 and 2014, Canadian industrial design ap- plications in China went up an astonishing 205 per cent, while patent applicants grew by 52 per cent. In trademarks, the level rose by 138 per cent in the same time frame, with China overtak- ing the EU as the second most popular place for Canadians to file after the U.S. "China is an economic power, which makes it a very important market to Canadian businesses," Schwartz says. At Bereskin & Parr LLP, the firm recognized the growing importance of China to its cli- ents by hosting a recent webi- nar for businesses considering expanding their brand in the country. Janice Bereskin and Sharyn Costin, Toronto-based partners at the intellectual prop- erty boutique, were joined by experts in Chinese intellectual property for the session. "We repeatedly hear from clients in a variety of fields that China is a place they want to be protected. But it also presents some unique challenges because the system operates quite differ- ently from the Canadian one," Costin says. "We wanted to ad- dress some of the issues that commonly arise." For example, she says, the Chinese trademark process re- quires Canadian companies to adopt a completely different mindset than they are used to, since rights arise almost exclu- sively from registration. In Can- ada, by contrast, they can acquire common law rights through use of a mark, she explains. "The first-to-file system is a key difference in terms of tim- ing. It's very important for clients not to leave it too late to think about getting marks in China, because by the time you're there, someone may have beaten you to it," Costin says. According to Bereskin, the Chinese trademark system's in- tricate class system for goods and services means Canadian companies have to consider reg- istering marks beyond their nar- row subclass to cut off potential "squatters." As well, there is the possibility that someone will create a translated or transliter- ated version of an existing Eng- lish-language trademark and register that in China, she says. "It's a change for Canadian companies, because they need to be more defensive and aggres- sive at the same time," Bereskin says. "Even if they're not doing business in China but think it's a possibility, we recommend they file trademark applications sooner rather than later." Although the firm has no formal alliance with a Chinese counterpart, Bereskin says it is developing plenty of connec- tions in the legal community there. "Sharyn and I are dealing with Chinese counsel almost every day. Things are always coming up," she says. "We pick partner firms who we know are experts in intellectual property and whoever we think would be best for a particular client. The law is always changing, so it's im- portant to work with experts in the field to make sure everyone's IP is protected." LT Sharyn Costin says the Chinese trademark process requires Canadian companies to adopt a completely different mindset than they are used to. INTELLECTUAL PROPERTY BOUTIQUES Innovative businesses choose Smart & Biggar — the recognized leader in intellectual property Canada's Intellectual Property Litigation Firm of the Year Benchmark Canada Awards 2017 Canadian Specialty IP Firm of the Year Award Managing Intellectual Property's North America Awards in 201 6 Band 1 for Intellectual Property Law in Canada Chambers & Partners – The World's Leading Lawyers for 2016 edition Top Tier for Intellectual Property in Canada The Legal 500 Canada 2017 S M A R T - B I G G A R . C A O T T A W A / T O R O N T O / M O N T R E A L / V A N C O U V E R / C A L G A R Y U N P A R A L L E L E D I P Untitled-4 1 2017-03-22 10:33 AM

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