Canadian Lawyer InHouse

JULY/AUGUST 2019 38 INHOUSE "It's also important that you can com- municate to your organization, [saying], 'Here's the kinds of patents we file, here's what you should be looking for in your work, here's the decision tree we use for fil - ing.' You need to be able to communicate with your inventors, with your technical population, if we're talking about patents, so that they know what to do." Bailey says that just because somebody is a developer or an inventor or an engin - eer, it doesn't mean they understand exactly what value their creation has to the business. Often, he says,creators don't even bring their projects to in-house counsel because they don't understand that the projects are patent - able or that those projects can benefit from the protection that comes with a patent. Communication and education can't be a one-time effort, says Dafniotis. They have to be ongoing processes that build a strong foundation and an encompassing culture. "I think that is one of the big mistakes that even mature practitioners may make or quite frankly overlook because they get so busy. Once you have this robust portfolio, you forget about the fundamentals, but the foun - dation needs to be not just built but main- tained and reinforced over time," she says. "That's really what gives you the greatest traction and adoption in the organization because the moment people understand and are engaged in a particular strategy, that's really when you get the most traction and success in protecting what needs to be pro - tected in your company." Communication goes beyond simply ex- plaining the company's approach to patents and trademarks and trade secrets and other forms of IP. It also means going out to the various departments where creative work is happening and getting involved, although the trick is getting the timing right — right for the creation or development process and right for the business. For example, Nardi, who is based in To - ronto, says that because the innovation team at Molson Coors is "very sophisticated" she tends not to get involved in the invention process too early. She tends to know what's going on, but she understands that not all inventions are patentable or even workable, so she starts to play a more active role once the project is at the stage where it is close to being able to file a patent on the discovery. In contrast, when it comes to develop - ing trademarks for new branding, she says, "We like to be involved very early because we've had situations in the past where they come up with a name, they sell everybody on it and think it's fabulous, then find out they can't use it. So, we're typically involved right at the beginning of the process now, once they've gotten half a dozen or a dozen names that they'll like, we'll take those away and see whether they're available or not." At the VBI subsidiary Variation Biotech - nologies Inc. in Ottawa, Eckenswiller drafts patent applications in-house. Being located in the same place as the company's research facility instead of at the corporate head- quarters in Cambridge, Mass. means she has access to the research scientists. This allows her to follow all of the new develop- ments and innovations that are likely to find their way into the company's IP portfolio. "I can't overstate the importance of stay- ing close to that, because things can move very quickly on the research front," she says. "I try to stay up to date all the time with what they're working on. That can be attending meetings of the R&D team — annual updates, quarterly updates and even weekly meetings sometimes. I try to stay up with it all the time so, as things are develop - ing, when a new idea comes forward, I try to keep my ear open. I also try to keep close so I'm aware of when people are making pres- entations or publications, as that can be a critical juncture in the IP world." Managing an IP portfolio goes beyond working with internal stakeholders. It also means dealing with legal challenges outside of the organization. Eckenswiller, who previously worked at National Research Council Canada, says that, because VBI (which has 126 fully owned or licensed or co-owned patents and patent applications) produces "vaccines in the bio - logics area," she has to be concerned not just about IP protection but about regulatory law. "In that area, as well as in all pharmaceut- ical areas, the availability of data protection to protect our products from competitors in the regulatory space is important. There is intersection between patents and regu - latory [rules and procedures] in terms of knowing how to use both of those processes and ensuring that those processes are well aligned to provide the maximum benefit for our company. Now, we think not only about patents to protect our products but data protection as well as the intersection of those two types of protection." In-house IP counsel also have to be con - cerned about changes to the law both here in Canada and abroad. Citing the changes to the Trade-marks Act that came into force in Canada in June — specifically the elimination of the intent to use requirement — Nardi says that Molson Coors (which has approximately 8,000 trade - mark assets and more than 200 patents regis- tered in more than 200 countries) will likely have to become more vigilant about competi- tors infringing on the company's trademarks. "We already have watches in place for all our main brands, but we may bump that up a little bit to cover some more brands, because if we see anything filed that's similar to ours, it could end up going through registration when there is no use. Really, I think what the Canadian office is doing is putting the onus on trademark owners to watch their portfolios and defend their marks. It used to be CIPO that did part of that for you, but now it's up to the owners. We're going to have to be more on top of things," she says. If Molson Coors does wind up fighting infringements due to the revised law, that won't be anything new for the brewery. Nardi says there is a lot of litigation in the beer business, with not just big breweries challenging each other but with smaller L a w D e p a r t m e n t M a n a g e m e n t "Really, I think what the Canadian office is doing is putting the onus on trademark owners to watch their portfolios and defend their marks." - Joanne Nardi

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