Patent rights are the lifeblood of the global innovation economy and one of the most valuable corporate assets a growing business can have. With the right strategy, IP assets can be levered to secure financing for company growth, as well as attract and solidify partnerships.
For growing Small to Medium Sized Enterprises (SMEs), in particular, the decision to file patents in foreign jurisdictions can be a strategic step on the path to expansion. Doing so, however, is oftentimes easier said than done, and companies seriously exploring this option must be fully attuned to the complexities and costs of such a venture.
In July 2022, Gowling WLG partners Timothy Bailey and Sumiko Mori were joined by Tatsuhiko Abe and Hiroyuki Hashimoto, patent attorneys with Shiga International Patent Office, for an instructive webinar exploring the opportunities and risks associated with global patent protection.
The webinar, which captures both Canadian and Japanese perspectives, was co-hosted by Gowling WLG, the Trade Commissioner Service, the Embassy of Canada to Japan and Shiga. The full recording can be viewed on-demand below:
- For growing businesses, IP assets – underpinned by a solid IP strategy – can significantly bolster the chance of expansion. SMEs who hold formal IP are 60 per cent more likely to be high-growth, four times more likely to export, and more than four times more likely to expand internationally.
- There are no global patents; a Canadian patent only gives you exclusivity in Canada. However, for companies wishing to expand the protection of their inventions beyond Canada, there exist several options to help expedite the process. These include the Patent cooperation treaty (PCT), the Patent Prosecution Highway (PPH), and the Paris Convention.
- Registering patents abroad can be a complex undertaking, with IP laws and filing requirements varying from jurisdiction to jurisdiction – "grace periods," for instance, can fluctuate significantly between countries. The foreign filing license requirements of some countries, which considers where an invention was conceived, must also be factored into any global patent strategy.
- Translation costs can present an additional hurdle for Canadian companies looking to register their patents abroad. Patent applications are technical documents and can be quite large. The cost of having them translated should be assessed before determining which countries you wish to submit patent applications to.
- The enforcement of global IP contracts present their own unique challenges, including with respect to "Conflicts of law" – i.e., how does a court in one place assess a contract from somewhere else? Similarly, dispute resolution is an area that must also be approached cautiously in any IP agreement. The preferred dispute resolution mechanism, the application of local laws or international arbitration rules, and the location and language of proceedings should all be set out in writing.
- With foresight, preparation and the right advisers, the complexities of a global patent strategy can be managed proactively. In all cases, a business' patent strategy should be neatly aligned with its commercial strategy with a view to ensuring that its technology can be leveraged in the right place at the right time. Canadian companies just beginning this journey should start by identifying the right markets in which to expand, as well as potential partners within those markets.
Did you know about these online resources?
Gowling WLG can help you identify and take steps towards protecting your IP through our self-serve educational platform (GoXL), along with a complete toolkit on patents and trademarks designed for Canadian SMEs and scale-ups.
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