Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective management of intellectual property (IP) rights in Canada. It is important to have an overall strategy to protect your IP. IP may be protected differently in Canada and in the United States, and the scope of protection may be different. Rights must be registered and enforced in Canada under local laws. For example, your U.S. trademark and patent registrations will not protect you in Canada. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a country depends on the national laws of that country.
Granting patent registrations is generally based on first-to-file or first-to-invent, depending on the country. Similarly, registering trademarks is based on a first-to-file or first-to-use, depending on the country, so you should consider how to obtain patent and trademark protection before introducing your products or services to the Canadian market. It is vital that companies understand that intellectual property is primarily a private right and that the United States government cannot enforce rights for private individuals in Canada. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Canadian law. The United States Commercial Service can provide a list of local lawyers upon request.
Although the United States government stands ready to assist, there is little the government can do if the rights holders have not taken the fundamental steps necessary to secure and enforce their IP rights in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights in a mistaken belief that the United States government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. government advice be a substitute for the responsibility of a rights holder promptly to pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Work with legal counsel familiar with Canadian laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
Small and medium-size companies should understand the importance of working with trade associations and organizations to support IP protection and stop counterfeiting. There are several organizations based in Canada and the United States, including:
- The United States Chamber and Local American Chambers of Commerce: www.uschamber.com
- American Chamber of Commerce in Canada: www.amchamcanada.ca
- National Association of Manufacturers (NAM): www.nam.org
- International Trademark Association (INTA): www.inta.org/Pages/Home.aspx
- International Anti-Counterfeiting Coalition (IACC): www.iacc.org
- Pharmaceutical Research and Manufacturers of America (PhRMA): www.phrma.org
- Biotechnology Innovation Organization (BIO) www.bio.org
- The Coalition against Counterfeiting and Piracy: www.iprcenter.gov
The Office of the United States Trade Representative (USTR) maintained Canada on the Watch List in 2020 in its annual Special 301 report on Intellectual Property Rights. Following the IPR provisions in the United States-Mexico-Canada Agreement (USMCA), the commitments will significantly improve the IP atmosphere in Canada. Improvement is noted in areas where there have been long-standing concerns, including enforcement against counterfeits, inspection of goods in transit, transparency with respect to new geographical indications (GIs), national treatment, and copyright term. Despite these changes, Canada remains to have issues like poor enforcement of counterfeit or pirated goods at the border or within Canada, weak patent and pricing environments for innovative pharmaceuticals, deficient copyright protection, and inadequate transparency. With respect to pharmaceuticals, the United States will continue to monitor the implementation and effects of recent changes to the Patented Medicines Prices Review Board’s pricing regulations. The United States has concerns about the fairness of Canada’s Patented Medicines proceedings and is monitoring proposed changes to Canada’s Patented Medicine Prices Review Board. The United States urges Canada to appropriately recognize the value of innovative medicines in both the private and public markets, to ensure that decisions are made transparently. Ultimately, the United States will continue to monitor closely Canada’s implementation of the USMCA’s intellectual property provisions as well as other developments. More information on the report can be found at the website of the United States Trade Representative at: https://ustr.gov/sites/default/files/2020_Special_301_Report.pdf
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- Patent, trademark, or copyright issues - including enforcement issues in the United States and other countries - call the STOP! Hotline: 1-866-999-HALT, or visit www.STOPfakes.gov.
- Registering trademarks and patents (in the United States as well as in foreign countries), contact the United States Patent and Trademark Office (USPTO) at tel: 1 (800) 786-9199, or visit www.uspto.gov.
- Registering for copyright protection in the United States, contact the United States Copyright Office at tel: 1 (202) 707-5959, or visit www.copyright.gov.
- How to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website at www.stopfakes.gov.
- Obtaining and enforcing intellectual property rights and market-specific IP Toolkits, visit www.stopfakes.gov/Country-IPR-Resources. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. government officials who are available to assist SMEs.
- In any foreign market, companies should consider several general principles for effective management of their intellectual property. For background on these principles, please link to articles on Protecting Intellectual Property and on Corruption.
For further information, please contact Jennifer Carton, International Trade Specialist, Telephone: 202-482-4146, E-mailRaquel.Cohen@trade.gov.