Intellectual property law: An overview for immigrant entrepreneurs
Credit to Author: Canadian Immigrant| Date: Tue, 17 Sep 2019 02:54:57 +0000
Did you know immigrants who have been in Canada for 10 to 30 years have higher rates of private incorporated company ownership than those born in Canada?
If you’re a new Canadian thinking of starting a business, or having already started a business, it’s important to consider your intellectual property and how you can best protect it in Canada. Remember, a small business today may not consider protecting its trademark a key priority, but every successful business starts somewhere.
Consider one of Canada’s most successful immigrant entrepreneurs for instance. Robert Herjavec immigrated to Canada from Ukraine, started a business, and is now CEO of one of North America’s fastest-growing technology companies, Herjavec Group. The company’s name and trademark, Herjavec Group, now constitutes a very valuable asset of the business.
Understanding the basics
In Canada, intellectual property law is primarily under federal jurisdiction, which means the same set of rules applies everywhere across the country.
Canada is party to a number of international treaties and agreements relating to intellectual property which impose reciprocal relationships between countries and simplify international protection, however, please note that these do not preclude the existence of unique formal requirements for protection within Canada.
A familiarity with Canada’s intellectual property law is important not only to ensure that you’re properly protected yourself, but also to avoid infringing on the rights of others. For example, the absence of a copyright notice in Canada does not necessarily mean the work in question is in the public domain and free for you to use. Taking an unmarked image for use on your website or in your marketing efforts can lead to liability for infringement of the author’s copyright.
Categories of intellectual property
This article highlights three main categories of intellectual property which may apply to your business.
1.Copyright
In Canada, your original literary, artistic, dramatic or musical work is automatically protected by copyright as soon as you create it as long as it is fixed. In other words, you do not need to register for copyright protection. However, there are advantages to filing for a copyright registration in Canada. A copyright registration is evidence of your ownership of the copyright in the work and creates a presumption that anyone infringing on your copyright had knowledge of it. This presumption is relevant to the damages a court may order against an individual or entity who is found to have infringed on your copyright. In Canada, registration of copyright is relatively simple as compared to other intellectual property protections and unlike other countries does not require submission of the work in which you wish to register copyright.
2. Trademark
Choosing a business and/or product name is one of the first decisions you’ll make as an entrepreneur. What you call your business or product can develop into a very valuable asset as you gain a reputation in the market. Your name will draw customers to your product or business and you’ll want to protect it against misappropriation by competitors in the marketplace. Trademark law protects your exclusive right to use a word, phrase or design in association with the goods and/or services in which your business deals.
While it isn’t absolutely necessary that you register your trademark in Canada, your protection is greatly enhanced by a formal registration. Your registration is evidence of your exclusive entitlement to the use of the mark and gives you additional legal grounds on which to enforce your right.
Canada recently amended its Trademarks Act introducing substantial changes to the conditions for the registrability of a mark. The changes expanded the definition of “trademark” to include things like holograms and scents and removed a longstanding “use” requirement. Canada no longer requires an applicant for a trademark to establish that they are using the applied-for mark. This change may facilitate registration of a mark in advance of going to market, but it is important to note that use is still relevant in opposition and enforcement proceedings after your trademark is issued. You can expect to be required to provide proof of use in the future if a third party opposes your mark, or at the request of the Trademarks Office.
3. Patent
Patent law protects new, useful, and inventive products, compositions, machines and processes. If your business is developing an innovative new product, you may be entitled to a patent for your invention.
A Canadian patent owner has the legal right to exclude others from making, using or selling their invention. This right lasts from the date the patent is granted to 20 years from the date the application for a patent was filed.
It’s important to file a patent application as soon as possible. In some countries, any public disclosure of the invention prior to filing for a patent precludes the inventor from being granted a patent. In Canada, there is a 12-month grace period which means you have 12 months from the first public disclosure made by you, or by a third party through you to file an application. Canada’s 12-month grace period therefore does not protect your ability to be granted a patent from independent third-party disclosure and it’s important to file promptly to avoid your application not being granted as a result of such disclosure. Furthermore, in Canada, the public disclosure must also be an enabling disclosure in order to trigger the 12-month grace period. An enabling disclosure allows a person skilled in the relevant art (i.e., pharmaceutical chemistry, if the invention is a drug) to arrive at how to make and use the invention. If something is disclosed to the public without creating an opportunity for it to be subsequently independently produced or used by a person skilled in the art, it may not be classified as an enabling disclosure.
There is also another reason to file your patent application as soon as possible: Canada operates on a first-to-file basis. This means that if you and another inventor both invent the same thing, the first person to file an application for a patent is the one that can be granted the patent. It is not significant that the other individual invented it earlier, it is only the filing date of the application that matters.
This article provides just a brief overview of some of the more prominent peculiarities and procedural requirements of Canadian intellectual property law. Given the massive value of intellectual property , and the value new Canadian entrepreneurs and their businesses bring to Canada, entrepreneurs are encouraged to seek the support of a qualified professional to best protect your rights.
About the author: Christopher Heer is the owner and founder of Heer Law. He is an intellectual property lawyer, registered patent agent, registered trademark agent, and is also certified as a specialist in intellectual property law (patent) by the Law Society of Ontario.