Law Times

Page 10 June 11, 2018 • Law Times www.lawtimesnews.com More incentives needed for emerging businesses BY MEAGAN GILLMORE For Law Times I ntellectual property lawyers say the federal government's recently announced intellec- tual property strategy gives a positive framework for IP pro- tection and promotion in Can- ada, but it could include more concrete incentives for emerging businesses. The government announced in April that it plans to invest $85.3 million over the next five years to promote and protect in- tellectual property. The strategy lists three main areas as its points of focus: up- dating IP legislation; creating tools and services to help com- panies grow; and increasing education and awareness of IP among businesses and the gen- eral public. "This particular announce- ment, in all of its forms, is a bit of a new thing," says Edward Fan, a partner at Torys LLP in Toronto and co-ordinator of the firm's intellectual property group. There had been talk about a strategy for months, he says, but "the announcement is probably more sweeping than originally thought." Fan says these proposed changes to the law are important to prevent activities that could harm intellectual property in Canada. As innovation becomes a larger part of jobs, he says, it's difficult to imagine the econo- my growing at a "robust pace" without a strategy devoted to IP. Fan says, for example, that the strategy's proposed require- ment that trademark holders prove a mark's use within three years of registration is intended to prevent people from register- ing trademarks they don't intend to use. This is particularly important because upcoming changes to the Trade-marks Act will allow people to register trademarks they are not currently using in Canada, he says. The strategy includes the creation of a college of patent and trademark agents. "A college of patent and trademarks agents is something the industry has worked toward for a long, long time," says Janet M. Fuhrer, a partner at Ridout & Maybee LLP in Ottawa and past president of the Intellectual Property Institute of Canada. Establishing a specific college for trademark and patent agents shows how important these pro- fessionals are in the industry, she says. "It's recognition of the im- portance of intellectual property professionals in Canada," says Fuhrer. Trademark and patent agents follow a code of ethics, she says, but a college will show the public it has established disci- pline procedures and standards like other regulated professions, such as teachers or engineers. Included in the government's proposed changes are mandat- ing that patent demand letters specifically include the number of the patent being referred to and descriptions of the poten- tially problematic behaviour and specifying that settlement demands cannot be included in copyright notice and notice let- ters. Patent laws will be changed to, among other things, clarify that experiments for patent re- search are not considered in- fringement, the government's plan says. The strategy also includes proposed changes to trademark legislation, specifically requir- ing that rights' holders prove a trademark is being used within three years of its registration. The strategy also includes ways to increase the certainty for busi- nesses by allowing intellectual property licensees to continue to use the intellectual property during liquidation proceedings. These proposed amendments have not been introduced yet. The government has also an- nounced several tools that could help businesses better use their intellectual property. "The most exciting part [of the strategy] is the strategic intellectual property tools for growth," says Nathaniel Lipkus, a partner and intellectual prop- erty litigator at Osler Hoskin and Harcourt LLP in Toronto. These strategic tools for growth could distinguish Cana- da internationally if they're used properly, he says. The strategy's website says one of the tools is having the Standards Council of Canada work with Canadian businesses to leverage their intellectual property during the develop- ment of international standards. Often, Canadian businesses don't have a say in developing international standards for new technologies, says Lipkus. The government plans to cre- ate a centralized portal that will help businesses access intellec- tual property held by the gov- ernment and academic institu- tions. Another tool announced was a collective that will bring busi- nesses together to help them find IP solutions. This collective, called the Patent Collective in the strategy, is a pilot project expected to run from 2019 to 2020. "We want to make sure that companies know they have the support of the government to be involved in the conversations that actually do re-shape the world," says Lipkus. These tools could help com- panies compete globally and grow, because they show Canada to be a good place to do business, he says. Some things, such as the Pat- ent Collective, are still very ab- stract and won't help all compa- nies, says Lipkus. "They won't move the needle for very small companies that are just trying to live for tomor- row," he says. "But for companies that have actually got past a certain point and have a chance to grow, these are the kinds of things that could position Canada as a good place to be doing business." The government hasn't al- ways shown a strong commit- ment to protecting business' in- tellectual property, says Lipkus. "We've incentivized spend- ing at other times; for example, on research and development," he says. "There's never been a time that a Canadian government has signalled that intellectual prop- erty protection was important for Canadian businesses, and so I feel that we're doing catch-up." Lipkus says the strategy's general direction is positive but it needs to include more "pull" elements — incentives for busi- nesses to protect their intellec- tual property. He says he would have want- ed to see more concrete items he could present to businesses. Lipkus works with many businesses that are early in their development and are working to get their ideas from the lab to the market. They don't have a lot of time or money for the multiple tasks they need to complete, he says, so protecting intellectual property does not seem as im- mediate to them as paying rent or hiring employees. The government needs to do more than just announce tools; it needs to actively pursue inno- vative businesses, says Lipkus. "Small companies aren't surf- ing the [Canadian Intellectual Property Office] website," he says. These incentives could in- clude providing tax credits for businesses that protect their IP or funding part of the first pat- ent of a business's core invention, Lipkus says. From what he's observed, he says, small businesses are more likely to prioritize activities that are helpful for their businesses if the government is going to give them money for it. This doesn't mean the government needs to fund everything; Lipkus says the government could consider offering loans that are partly for- givable, for example. "Until they have that," he says, "I don't know if this cocktail of programs will be the thing that tips the scale." The new strategy also in- cludes programs dedicated to raising awareness about the im- portance of intellectual property for businesses and the general public. The announced activities in- clude: funding IP legal clinics; creating a dedicated group of IP officers in the government to work with the government; and surveying Canadians about how they understand intellectual property, including focusing on women and Indigenous Peoples, two groups the government says are more likely to not use IP. Fuhrer calls suggestions that most companies don't have in- tellectual property a "mischar- acterization." "I think most companies do have intellectual property," she says. "They don't necessarily rec- ognize that they have it or pur- sue registration of it." The strategy highlights wom- en as a group to receive more education about intellectual property. Many women already under- stand the need for IP strategies, says Fuhrer. "As our economy grows, there are more women entrepre- neurs, and I think many of them do understand the significance of intellectual property." The real need, she says, is to have more IP professionals who are women. The strategy also says it will target education for Indigenous communities, some- thing Fuhrer calls "interesting" and important. LT FOCUS HENDERSON STRUCTURED SETTLEMENTS LP Our dedicated legal, brokerage, financial, and administrative teams provide the most thorough and expedient service to each and every client. We invite you to contact us today. You can count on us! THE MOST THOROUGH & EXPEDIENT SERVICE GUARANTEED. PROUD SPONSOR OF SPINAL CORD INJURY ONTARIO AND THE ONTARIO BRAIN INJURY ASSOCIATION PROUD SUPPORTER OF MADD CANADA 905.523.6000 | 1.800.263.8537 www.henderson.ca Untitled-5 1 2018-03-06 1:28 PM Edward Fan says it's difficult to imagine the economy growing at a 'robust pace' without a strategy devoted to intellectual property.

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