Protect IP outside Canada: 3. Learn about IP in target countries

3. Learn about IP in target countries

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Step 1: Check for existing IP abroad

Search relevant IP databases for any existing trademarks, patents, industrial designs or copyright overlapping with your creations. If someone already owns the IP in another country, it could limit or even prevent you from formally protecting your IP in your home country and taking your IP abroad.

Note: This is an initial search only. Let an IP professional verify and complement your search.

Be prepared to seek expertise

Be aware that searching, finding and understanding IP rights can be complex. An IP professional can be of great help and often have experience in searching and drafting IP documents. It is strongly advised to seek the help of a professional such as the following:

  • an IP professional: someone with extensive experience offering their advice as a service
  • an IP agent: someone who has passed qualifying exams and is entitled to act on your behalf with the Canadian Intellectual Property Office (CIPO)
  • an IP lawyer: a qualified lawyer with specialization in IP law and related legal matters

It can be well worth your time to prepare well before you meet with an IP professional. Do your own preliminary search and ask the experts to fill in the gaps.

Do a search in the markets you are interested in to avoid conflicts with IP rights of third parties in those jurisdictions. Look for where your competitors and partners have filed for IP protection, as this is usually a good indicator of their key regions.

There are some important limitations to be aware of:

  • Patents

    Patent applications filed less than 18 months ago are only available if the applicant specifically asks for them. Due to the complexity of claims, vocabulary and different languages, it is practically impossible to find every relevant publication.

  • Trademarks

    In general, business names are not necessarily registered as trademarks. Also, in some countries like Canada, trademarks do not have to be registered and may be protected under common law (in Québec, the Civil Code of Québec acts has similar principles).

  • Copyright

    Copyright is automatically established when a work is created. Canada and more than 170 other countries have signed the Berne Convention, which deals with the protection of works and the rights of their authors. There is no international copyright registration system or requirement for formal registration. Most countries have a system in place to allow for the formal registration of copyright, but it is usually only searchable by title.

Note: This is an initial search only. Let an IP professional verify and complement your search.

For example, in the context of trademark protection, investigate these questions:

  • Is anyone using your (or similar) trademarks?
    • If so, are they protecting the same goods and services classes as you?
    • Is there a risk that your trademark is too similar to something already existing?
  • Are these IP rights maintained? (e.g. have maintenance fees been paid?)

IP databases and regulations resources

Step 2: Learn about IP regulations in these countries

IP rights are subject to local regulations, procedures and laws. To make the best use of your time with your IP professional, develop a basic understanding of some of the IP regulations, procedures, offices, fees and best practices to protect your IP in specific countries.

For example, before you meet with an IP professional, try to find out the following:

  • what the national IP laws cover and if there are any exclusions to what you can protect (e.g. higher life forms, software, business methods)
  • if you are required to be represented by a certified local IP practitioner, such as a nationally registered agent
  • what language(s) you may use to file your application
  • the various fees and how to pay them
  • time limits to file for protection and pay fees, and other deadlines

Step 3: Hire an IP professional

Getting IP protection abroad can be complex. It requires knowledge of the IP regulations, procedures and laws and adherence to many deadlines for the different countries. Build your network of professionals who can share their expertise about the local laws and ways of doing business, and about how to seek formal IP rights abroad.

In some cases, your Canadian IP professional will need to work with a local agent to act on your behalf before that country's IP office.

Find an IP professional Find a trade commissioner

IP databases and regulations resources

IP databases and regulations resources
IP rights Resource Resource type
Trademarks Global Brand Database (World Intellectual Property Organization [WIPO]) Database
Trademarks TMview database (European Union Intellectual Property Office [EUIPO]) Database
Trademarks Madrid Member Profiles database (WIPO) Regulations
Patents PATENTSCOPE (WIPO) Database
Patents Espacenet (European Patent Office [EPO]) Database
Patents National patent office databases (EPO) Database
Patents Guidelines and Manuals of National/Regional Patent Offices (WIPO) Regulations
Patents Certain Aspects of National/Regional Patent Laws (WIPO) Regulations
Industrial designs Global Design Database (WIPO) Database
Industrial designs DesignView (EUIPO) Database
Industrial designs Hague Member Profiles database (WIPO) Regulations
Copyright Berne Convention summary (WIPO) Regulations
Trade secrets Paris Convention for the Protection of Industrial Property (WIPO) Regulations
General Country Profiles (WIPO) Regulations
General WIPO Lex (WIPO) Regulations

Other resources