Lisa Desjardins (LD): Intellectual property rights such as patents, trademarks, industrial designs, and copyrights are territorial and managed by the IP offices of countries around the world. For the most part, these are governmental organizations in each country.
When someone applies for a patent or wants to register a trademark, industrial design, or a copyright in Canada, it is the Canadian Intellectual Property Office that receives and examines these applications and, assuming that the applications meet the respective prerequisites, the Canadian Intellectual Property Office is responsible for issuing the IP titles that grant exclusive rights to their owners.
Intellectual property is a form of intangible asset and can become extremely valuable to a company.
For this reason, many companies rely on the help of an IP professional such as a patent or trademark agent to assist them in this process of obtaining IP rights.
The Intellectual Property Institute of Canada is the professional association for patent agents, trademark agents, and lawyers practicing in all areas of intellectual property law. In this podcast, we'll learn more about what IP professionals do, and how you can get the most out of your first meeting with an IP agent.
I'm joined by Louis Martineau who is a registered patent and trademark agent at Lespérance and Martineau in Montreal. Louis has been a speaker at numerous events on intellectual property matters, is a fellow of the Intellectual Property Institute of Canada and also participates on their public awareness committee.
Louis, what a privilege to have you in our podcast!
Tell me a little bit about yourself and how you came to work with IP.
Louis Martineau (LM): Thank you Lisa. So I've been working in IP ever since I had a summer job as a student in engineering in the early 90s. I'm kind of a geek for words and I've always been very passionate about reading and writing and this continues to surprise my friends. I get a kick out of reading legal texts and patents so I ended up becoming a registered patent and a registered trademark agent.
LD: Oh, so you're working with words… but what is the basic role of an IP professional?
LM: Yeah, I get that question a lot during dinners with friends; "what is it that you do as a patent agent?". So… IP professionals, we are hired privately by businesses to provide business council concerning their IP which means that we represent the clients before the different national IP offices to file and prosecute their IP in view of obtaining granted IP rights.
LD: Oh, that's a lot of complicated words. When you say "representing a client", what does that mean?
Like, what does an IP professional do, practically?
LM: Yeah, well let's say our job is similar to a lawyer negotiating a contractual agreement or to an accountant providing counsel on tax matters. So, as an IP professional I evaluate what the IP business has that might be protected. I also search for other IP to clear use by my client, or to see if what they have can indeed be protected. I'll prepare a file that best represents the interests of my client to obtain valuable exclusive rights for them, and for this I'll correspond with the IP offices in the name of my clients. Finally I'll provide suggestions to hopefully get the best value out of the IP for my client.
LD: We're talking about patents and trademarks and different forms of IP. What kind of different IP professionals are there?
LM: Well, there are patent agents. These deal with matters that relate to patents, meaning inventions that have a certain functional feature. There are trademark agents that deal with matters that relate to trademarks such as names, or logos that are used to distinguish goods and services from those of other companies. There are also intellectual property lawyers that draft IP and commercial contracts, including for instance licensing and transfer of rights, that provide litigation services, and that also provide services related to copyrights. And finally, there are mediators and arbitrators that help settle disputes between parties without going to court, usually at lower cost and more quickly.
LD: So you're a registered patent and trademark agent. What is the typical profile of the people that you help?
LM: Well, as IP professionals we generally represent companies that require IP services which means that we act as intermediaries between the IP owners and the IP offices. Myself, I work in an IP firm that targets mainly small and medium sized businesses including start-ups. So, I meet with inventors, engineers, managers, and owners in those companies like many of my colleagues do.
LD: I see. I can imagine that this is often at the early stages of trying to protect your intellectual property. What are the what are the most common questions that you get from your clients?
LM: Oh we get many different types of questions. There are a few examples of some questions that we might get from those that have not dealt with IP yet:
Do i need to have built my invention to patent it? So the answer is no; you don't have to have built it yet to patent it.
Is it guaranteed that I'll get a patent on my invention if I file an application for it? The answer is: no, it will not be guaranteed.
If someone does minor modifications, for example, they change a bolt for a screw on my patented device -will they be able to circumvent my patented protection? Again, the answer to that question is: no, they would not be able to circumvent your patent by simply changing a minor feature such as a bolt for a screw. Another question that we might get is: Another company uses the same trademark as mine but in a totally different field. For example, I sell shoes and they sell computer programs. Can they stop me from using my trademark? The answer to that is less black and white, but in most circumstances, no they could not prevent you from using your trademark.
LD: Interesting breadth of questions. I know there are hundreds of registered patent and trademark agents across Canada and that for the most part, people use these to file for IP rights. What would you say to someone who's thinking about preparing their own application?
LM: Well, while you're allowed to represent yourself before the IP offices IP law in practice is frankly quite complex. Hiring an IP professional will help you avoid costly mistakes that can have irrevocable consequences. It will let you get the most out of your IP also and in many instances it will allow you to get IP protection where you would not have been able to get any at all because of the complexity of the IP file. This is a bit like hiring a lawyer to represent you before the courts.
LD: Some say that applying for IP rights is also expensive. What do you say to them?
LM: Well, applying and prosecuting for IP rights can be indeed relatively expensive in some circumstances. But, not as much as ignoring IP altogether. There are ways to mitigate costs. Hiring an IP professional is likely to help you get the most out of your IP and avoid costly mistakes. Some such mistakes include for example, first disclosing your invention before you file a patent application on it, which might invalidate your applications. Or, another such costly mistake could be using a trademark that is already in use by another company unbeknownst to you. Or, selling a product that might infringe on someone else's IP.
LD: Can you talk a little bit about the kinds of things that can affect the cost of applying for IP rights?
LM: Sure. There are ways to mitigate costs as we mentioned earlier. So, for instance the type and number of different IP titles that your business seeks will obviously influence the costs. If you're looking for a single patent or a single trademark versus looking for numerous patents or numerous trademarks, it won't cost the same thing. Also, the number of countries in which you wish to protect your IP will influence the costs and there are strategies to decide on a certain specific set of countries that might be a cost saving for you. For patents, whether an invention is in a complex technological area might influence the costs. For trademarks, whether your trademark is used in association with numerous different products and services might also influence costs. Finally whether the area your IP pertains to is crowded with similar other IP of other businesses will also influence costs.
LD: That's quite a few things that can impact your cost. And I can imagine, at the early stages when you're trying to protect your creation or invention, some people might just not be able to afford it. What would be your cost saving advice to those who may have something they want to protect, but they don't have the funds to do so just yet?
LM: That happens often especially for small sized businesses or startups. And, there are ways to minimize front loaded costs or deferring costs such as for example filing a less expensive so-called provisional patent application. A provisional patent application might reserve your rights for a single year. Or, you could file a single patent application or trademark application and use an international priority convention to reserve your rights in other countries for some time. In all of those cases you can get temporary protection on your IP and reserve your rights for a specific time period. Meanwhile, you can apply for grants and subsidies or you can seek private funds to pay for your future IP expenditures.
LD: So, we're talking about the different things that can affect your cost to apply, and the various kinds of IP that you can protect. But, at the same time, many people are new to this. What is a good way for someone new to IP to prepare for their first meeting with an IP professional?
LM: Well Lisa, a first meeting will allow you to get to know your IP professional. But the opposite is also very important; they have to know who you are, and what is your business. So, my suggestion would be to prepare information on your business. Namely, the types of clients that you have, the types of products and services that you sell, who is your closest competition, what distinguishes your business from other businesses, and finally, what countries do you operate in? Also, you should consider goals that you wish to achieve with your IP protection before you go to that first meeting although your IP professional will help you clarify those goals. But still, you can consider do you want to prevent knockoffs or copycats? Are you concerned that you might be copying others? Are you trying to position your product your brand or your service on the market? Or, are you trying to attract inventors or business partners? Consider your budget over time that you may dedicate to IP before you go to that first meeting. And, that's not just your initial budget for the next upcoming weeks or months, but also that the budget that you might dedicate over the next several years.
LD: Okay, that's a lot of information to prepare - but I can see the value in doing so.
Any last recommendation?
LM: My main recommendation is to get advice from an IP professional early on because there are things that you need to know before you file your first application on IP, and before you disclose your invention to the public, or you start using your trademark. By getting advice from your IP professional early, you'll avoid many costly mistakes and you'll get the most out of your IP.
LD: Louis, it's been a pleasure to have you here and thanks for sharing your knowledge and expertise with us! Thank you!
LM: Thank you Lisa, the pleasure is all mine.