3. Learn about IP in target countries
On this page
- Step 1: Check for existing IP abroad
- Step 2: Learn about IP regulations in these countries
- Step 3: Hire an IP professional
- IP databases and regulations resources
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:
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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.
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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).
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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 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
- Trade Commissioner Service – Country and sector information for international business
- CIPO country guides
- List of links to IP offices around the world