Canadian IP Voices: What IP agents do

Canadian IP Voices is a podcast where we talk about intellectual property (IP) with a range of professionals and stakeholders across Canada and abroad.

In episode 1, "Why use an IP agent?", Louis Martineau, a registered patent and trademark agent at Lespérance and Martineau in Montreal, provides insights on what an IP agent does and how hiring one can help businesses and entrepreneurs file for formal IP rights.

Entrepreneurs continuously come up with great new ideas, but it's not always obvious how these innovations can be protected with formal IP rights. Now, we will explain working with an IP agent in real life using a fictitious example of a small business.

Sarah's Sweet Treats

In 2019, Sarah started her bakery, Sarah's Sweet Treats. She proudly uses secret family recipes for her products and unique packaging and product names. Sarah's pastries come in a special self-sealing package that she created so the treats can last longer. She also offers seasonal promotions and uses catchy taglines for advertising on social media. Recently, her pop-up booth promotions have gone viral leading to a surge in popularity and new customers. Sarah has designed a new booth with a unique and appealing look where she will continue to offer free samples and debut new products that she hopes to unveil in the coming months.

Sarah learned about the importance of filing for IP protection during a Women in Business conference on brand protection. As a result, she decided to hire an IP agent to assist her in creating an IP strategy and filing for protection. Sarah found an agent using the College of Patent Agents and Trademark Agents public register. She already understood the different types of IP after visiting the Canadian Intellectual Property Office website and connecting with one of its IP advisors. The advisor helped her identify her IP using the IP inventory checklist. They also advised Sarah to review certain questions before meeting with an IP agent (PDF).

After meeting with an IP agent, Amy, Sarah was eager to get started. Initially, she was worried that the process would take her away from running the bakery, but Amy reassured her that she would file and correspond with the IP office on her behalf, saving her time. Another concern Sarah shared was regarding cost. She did not have a large budget and hoped that Amy could make recommendations on where she could save money.

First, Amy did an internal scan of Sarah's bakery to identify what could be protected. She then searched online to see what IP already existed to clear use for Sarah. After this research and analysis, Amy created a file containing her recommended strategy representing Sarah's best interests to obtain valuable, exclusive rights. When she presented her plan to Sarah, she included suggestions to best protect her IP and how this could be done cost-effectively to accommodate Sarah's budget and goals. Amy identified the following aspects of the bakery that could be protected:

• Patents: To protect Sarah's novel self-sealing packaging for her pastries. If Sarah's novel and useful invention is protected by a patent, she will have the right to exclude others from making, using or selling that invention.
• Trademarks: To protect Sarah's brand. Since Sarah has established a strong brand with her logo, taglines, unique product names, and packaging, Amy wants to file for exclusive rights to ensure that no one can copy those aspects of her business.
• Copyright: To protect Sarah's online content, including social media and the content on the bakery's website. While registering a copyright is not required in Canada, it helps if Sarah has to prove her ownership. Doing so will serve as evidence that the copyright exists, which can be useful in case of a dispute with someone if they tried to copy her original creations without her permission.
• Trade secrets: To protect Sarah's family recipes. Trade secrets are protected by their owner without any registration with the IP office. More specifically, there is no cost and there is no formal registration process. As a result, they can potentially last forever, provided that Sarah keeps the information secret. There are many methods to minimize the risk that the trade secret is lost. For example, Sarah can use confidentiality agreements.

With Sarah's approval, Amy filed for exclusive rights and corresponded directly with the IP office when necessary. She gave Sarah relevant updates and was equipped to answer all of her questions throughout the process. Hiring an IP agent meant Sarah could focus on running her business and engaging with her clients.

To recap, IP professionals assist their clients in developing strategies and growing their businesses by protecting their IP rights in Canada and abroad. Remember, the sooner you begin building your IP portfolio, the better. So, be sure to consult with them early in the process.

Disclaimer: The Canadian Intellectual Property Office cannot advise applicants about their choice of agent. For a complete list of licensed patent and trademark agents, please visit the College of Patent Agents and Trademark Agents public register.