Canadian Lawyer

February 2021

The most widely read magazine for Canadian lawyers

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Page 30 of 35 29 Zischka notes that the practicalities of securing IP in Canada "remains a challenge to SMEs not only because of the cost associated with the process but the uncertainty associ- ated with enforcing these rights even if they are obtained." Stephen Beney, a partner at Bereskin & Parr LLP in Toronto, says he is all for the government encouraging working with firms like his to spread the word of the importance of IP to the core of a company's strategy. "Like how is it going to get you where you want to be three years from now? Five years from now?" He says the approach he has seen SMEs take to IP has been a "mixed bag." "There's no shortage of innovation out there, but IP awareness is not always the first thing that comes to mind," says Beney, noting that even those who are aware of IP treat it as a box to check, as in "I have to get a patent because my investor says so." Louis-Pierre Gravelle, a partner at Robic LLP in Montreal, agrees that "there's been a recognition, certainly at the federal govern- ment level, that intellectual property is becoming a key tool as a driver of economic development." Among the fundamental truisms of the innovation economy, Gravelle says, is that the "knowledge within companies needs to be crystallized into IP assets to create value and reward shareholders, employees and the general economy." According to the Canadian Intellectual Property Office, SMEs that are aware of or holding IP are three times more likely to have expanded domestically and more than four times more likely to have expanded internationally than their counter- parts who have not done so. However, as it stands, Gravelle says the way the federal strategy is now rolling out — focused on educating businesses about the need to get their IP house in order — doesn't provide the targeted money that businesses need to get the legal or other professional help to do that. PROPOSED AMENDMENTS TO IP LEGISLATION Establishing minimum requirements for use of patent demand letters, to discourage deceptive or vague letters and reduce costs in assessing merits of allegations. To prevent "trademark squatting," new bad-faith trademark opposition and invalidation grounds will be introduced. Use of a trademark within the first three years after registration will be needed to enforce a trademark. Creating a new College of Patent and Trademark Agents will regulate the profession. Changes in laws to affirm there is no infringement when conducting experiments that relate to the subject matter of a patent. However, resulting inventions still need to abide by existing patent laws.

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