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CCCA61_020-024,026,052.qxd:CCCA_V1No2_Recruiting-V1.qxd 02/07/2008 05:56 PM Page 23 Cover Story choose which ones would be most lucrative. being used in an unauthorized way. Some clothing makers have Chang recommends conducting appropriate searches to deter- outsourced their manufacturing to overseas factories that have mine whether or not there are any prior registrants for that IP,since hired people to audit the number of products actually being pro- “while you may be able to register in one country because you’re duced. In some cases, it became clear that more clothes were the first user, that may not be the case in certain other countries.” being manufactured than were accounted for and were likely Chang says another key step is to ensure that “if you want to being sold on the grey market. try and enforce your rights in a particular market, let’s say in China or India, that you are in a position to do so in accordance Missed deadlines translate into lost IP rights with that country’s particular laws. Have you filed a patent or If misuse of intellectual property has been detected, the initial trademark in that local country? Can you actually establish your step is to send a cease-and-desist order to the person or entity rights in accordance with those local laws as against other users involved,while simultaneously talking to the local authorities to who may have filed or registered something similar before you?” decide whether a police complaint should be filed. “Patents only protect you where you get a patent,” says One of the challenges in protecting intellectual property Andrew Lew, director of intellectual property and counsel at overseas is that in many jurisdictions, IP enforcement is not as Westport Innovations Inc. in Vancouver, whose company devel- strong as it is in western countries.To try and soften the impact ops engines that run on natural gas. He works with his compa- of that, a company should be very careful in choosing partners ny’s IP committee to forecast the most important markets and to work with overseas, vetting them carefully and building good which countries they should apply for patents in. Because of the relationships with companies and governments. External coun- high cost of filing for a patent in every country around the world, sel are needed to help make filings and to work on the enforce- Lew says his company doesn’t patent every invention it creates. ment side if an unauthorized user of IP has to be taken to court. Since each company has a finite amount of resources,“it can be Timing is critical in the intellectual property world.A missed a juggling act between what you invest in IP,versus what you invest deadline can result in the loss of IP rights,so companies often rely in making sure you succeed,”says Lew.“So if a company never has on specialized software,such as PATTSY and FoundationIP, which registered IP rights in China and somebody copies your stuff there, can keep track of changing IP legislation around the globe. that’s the choice you made by not registering your patents there.” A network of local lawyers in various countries is helpful, To manage patent filing costs,Lew looks at“where we can cap- since IP laws differ from one nation to the next and it’s difficult ture a significant portion of that market that will provide us with to keep track of changing legislation in each jurisdiction. a competitive advantage in a global marketplace. Some countries Different laws, languages and currencies all combine to make are small market players who will take advantage of that and will protecting IP around the world that much more difficult to man- copy your technology,but then they can’t sell it on a global scale.” age. A local representative can give guidance on a country’s laws, Lew actively manages his company’s IP portfolio “to make to help make applications and, on the enforcement side, to col- sure that we trim away the paths that no longer have value to us lect the appropriate evidence that demonstrates a violation of or identify ones that we want to seek in more countries.” international property rights. One way to protect intellectual property abroad is to employ “The value of IP is just so important,” says Geneviève investigators who can look into whether the company’s IP is Prévost, a lawyer and trademark agent at Smart & Biggar/ PRINTEMPS 2008 CCCA Canadian Corporate Counsel Association 23