Authors: Dan Altman (OC Partner), Ben Shiroma (LA Associate), Vlad Teplitskiy (OC Partner), Marko Zoretic (OC Partner), Knobbe Martens.
Introduction
Imagine that you are a founder of a revolutionary technology startup in Canada. Your company is about to release its blockbuster product that will disrupt the entire industry and catapult your company to fame and fortune. Your product is the result of years of research and development, and backbreaking work. Your product has cutting-edge technical features, a catchy name, and a sleek instruction manual. You have protected the product with Canadian patents and trademarks.
The Canadian release of your product is a huge success. As time goes on, your product becomes more and more successful in the Canadian market. The next logical step is to expand into the US market.
Unfortunately, an opportunistic competitor has copied your product and is already selling the copies in the US. The copies have nearly identical technical features as well as a similar name, and even an identical instruction manual. You want to stop such blatant piracy, but your attorney advises that your Canadian patents and trademarks are insufficient to stop the copying within the US. You also realize that your company neglected to apply for intellectual property (“IP”) rights in the US.
How could you have better protected your market? The following explains how you could have used a comprehensive IP strategy to achieve these goals.
Patent Protection
A patent grants the owner the right to exclude others from making, using, selling, or importing an invention for a period of time. Patent rights are territorial, meaning that a granted patent only affords the right to exclude within borders of that country. This is why a Canadian patent may not be used to prevent a competitor selling in the US (and vice versa).
It is possible to rely on various international treaties to “extend” patent protection from a home country to other member countries. Two such treaties, the Paris Convention and the Patent Cooperation Treaty (“PCT”), are discussed below. US, Canada, and most other countries are parties to the Paris Convention and the PCT.
The Paris Convention allows an applicant to file a patent application in a member country and then file a subsequent application in another member country within one year while maintaining the priority date of the subsequent application as the filing date of the original patent application. Thus, if you file a patent application in Canada and within one year file that patent application in the US, your US application would be considered as having been filed on the filing date of your Canadian application.
The PCT provides an opportunity to file a single international patent application to establish a priority date in all member countries, which include most, but not all, economically important countries in the world. After filing the PCT application, an applicant still has to forward the PCT application to each member country where the applicant desires protection. However, the PCT provides the opportunity to defer for several months the decision of where to pursue patent protection. During this time, your company can evaluate what markets justify the expense of seeking patent protection.
In summary, the Paris Convention and PCT allow you to preserve the ability to pursue patent rights in foreign countries while deferring the actual expenses of pursuing protection in the foreign countries. Thus, the options for obtaining foreign patent protection can remain open while your business matures.
Trademark Protection
A trademark is a symbol, word, or phrase used by a business to distinguish their goods or services from those of other businesses. In both the US and Canada, rights to a trademark are established simply by using the mark. This means that a first user of a mark in a country has the right to use the mark over a subsequent user in that country. However, like patents, trademark rights are territorial.
In the US and Canada, trademark rights can be significantly enhanced by filing an application for registration. Such applications can be based on the actual use of the mark or on an intent to use the mark. While applicants relying on intent to use the mark will be required to prove that the mark is being used, applicants may be given several years after filing the application to furnish such proof.
Under the Paris Convention, a trademark application filed in another member country within six months of an original filing in a home country can receive the benefit of the earlier filing date.
Analogous to the PCT, the Madrid Protocol provides a streamlined way to file in many countries at once. If an applicant files a Madrid Protocol application within six months of a trademark application in a home country, the applicant can retain the priority filing date of the home country application.
In summary, filing an application for the registration of your trademark with an intent to use in a foreign market of interest would preserve your trademark rights in that country and prevent your competitor from profiting off your goodwill. Relying on the Madrid Protocol can streamline this process should you be interested in multiple foreign markets.
Copyright Protection
A copyright grants the author of an original work exclusive rights to reproduce the work, prepare derivative works, and perform the work publicly. Although copyright protection is obtained as soon as a work is written down or otherwise stored in a tangible way, additional protection can be obtained through registration. In the US, registration provides presumption of validity and ownership as well as eligibility to recover attorney fees and statutory damages. As a practical matter, recovery of statutory damages can be essential because proving actual damages for copyright infringement may often be difficult. In Canada, registration provides similar evidentiary benefits such as the rebuttable presumptions of copyright existence and ownership.
Both Canada and the US are members of the Berne Convention. This Convention mitigates the territorial nature of copyrights by automatically extending copyright protection for a work to all member countries. This means that an instruction manual automatically receives Canadian copyright protection upon creation and, through the Berne Convention, protection in the US and other member countries.
Conclusion
Patents, Trademarks and Copyrights are just three forms of IP. Other forms of IP exist, which you will need to discuss with your IP attorneys as part of your overall business strategy. In today’s global marketplace, it would be prudent to carefully craft and refine the IP strategy for every country in which your company intends to do business. A comprehensive IP strategy should secure and preserve rights in order to keep the options for expansion open. While developing such strategy may be resource-intensive, it is essential in order to ensure that you reap the fullest rewards for your business.
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