Do patents, trademarks, and copyrights transfer across borders?
I am starting a web company that will inevitably do business in multiple countries, and I would like to know how best to protect my assets against infringement internationally. Would registering the assets in my home country (Canada in this case) be enough, or should I also look into registering them elsewhere as well?
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In Canada we have some features that are not the same as in the US which is the major trading country. Assets can be broader than IP and the kinds of protections that are possible can be structured.
If you are outsourcing some of the work, acquiring or preserving IP rights starts before the work begins with suitable agreements. Having more detail to your business plans before you talk to the lawyer can help to reduce costs. Talking to a lawyer will cost so the question is what would it cost not to talk to one that can help you.
Besides your IP, there are a number of other considerations that apply to operating a business online. In Canada, there is CASL and HST/GST and local taxes. Canada has agreements with multiple countries including the EU. Each jurisdiction you are in needs to entered intentionally and with suitable implementation. Since local laws change, this is not a one time question but an ongoing cost of doing business. A well designed and implemented business plan with continuing care is a foundation that will have long term value.
Would be happy to continue the conversation with more specific information either here or offline. I am based out of Toronto and all the people I work with / clients have interests in multiple jurisdictions. This is a routine process for us. If your interest is a long term business, it becomes more valuable and cost effective to get quality preventive solutions.
You will need to look into all of the countries that you might want your business to be operating/selling in right away, so go beyond your home country of Canada for sure and look into registering them in the other markets as well. I have worked with startups who have had to change their names and at times their market expansion plans due to this, so it is great that you are looking into this early.
Each IP right has a different answer, and it even varies across countries. Copyrights enjoy some international protection based on the Berne Convention (an international treaty on copyrights of which Canada is a member), but you have to make sure the countries you are interested actually joined it and what rights they give. Trademarks need to be registered in each country, and if you intend to do business in China, you'll want to register there as early as possible, even if you're not actually marketing there at first (they have a problem with trademark-poaching). In some countries, most notably the U.S., you can rely on your use of a trademark to develop some rights. I'm not a patent lawyer, but my understanding is that registration of patents is generally on a country-by-country basis with some regional exceptions. I know of some very good lawyers in Canada who could help you with all these questions. Please feel free to reach out if you'd like referrals.
No, they can't be transferred. You need to register them on each country. Although it helps to start somewhere, and that somewhere is your home country, in this case Canada.
I'm not a lawyer, so take this as an opinion.
That said, intellectual property registering (whatever its type) is a slow and costly process. It can easily take years. Don't stop or prevent to deploy because you're not registered on this or that country or because your trade mark or patent has not been finished.
All lawyers will tell you that registering proper IP is essential, of course, they got paid to do it :-)
But you have to balance the cost of doing all this with the cost of deployment. It serves little to have everything in place registered but the business might not be there. And if for some reason you're thinking that regardless of what happen you'll be protected, remember, IP in North America implies that you are the one that needs to defend your IP. Meaning? In case of violation of your IP, you're the one that needs to hire lawyer to take that case to court, for it to eventually be defended by law. All this process cost money.
So .... having your IP registered doesn't meant automatic and free protection.
Best of lucks!
"transfer"? Interesting selection of words. IP cross-border protection needs to be registered in the foreign jurisdiction(s) and, depending on the treaty or treaties, the process can be simple or more complex. For a complex example, someone mentioned China, but, to protect your IP in China, you have to register in EVERY Chinese province. Or, if Canada is member of an international patent treaty, a simple, additional filing with the treaty based form will provide protection for those member countries. Again, it depends. Do note that a friend with a U.S. patent of a non-revenue producing product must have filed everywhere in the planet. Must have cost over US$100k. Still the product never generated revenues. So you must balance IP protection with potential revenues and risks.
You can put some bright lines in place with a WIPO/PCT filing to make it easier but you need to prepare to file in each country. Also, different than in the USA, you cannot have commercialized the invention prior to filing a PCT (the US gives you a year to file). Also be prepared that the costs to pursue and then maintain can be very high. Look at WIPO for some guidelines. http://www.wipo.int/pct/en/
The answer is different for various forms of IP. Patents and Trademarks are territorial in nature, so they are only good in countries where they have been issued as Registrations. However, corresponding patent and trademark applications can be filed in other countries, either individually, or regionally. For example, an international filing can be made under the Patent Cooperation Treaty (PCT) and international Trademark applications can also be filed. This gives the national rights holder the opportunity to pursue a national patent or trademark filings in member states.
By contrast, copyrights are international in scope and will be enforced by Berne Convention member states thought the world.
So seek national filing/registration in Canada, and ask your attorney regarding international Patent and Trademark filings based on your Canadian Application. You can make specific decisions, based on your prospective market and your budget.
I hope this information has been helpful to you.