Canada: Going Global With Your Patents: Risks And Opportunities For Canadian SMEs (Video)

Patent rights are the lifeblood of the global innovation economy and one of the most valuable corporate assets a growing business can have. With the right strategy, IP assets can be levered to secure financing for company growth, as well as attract and solidify partnerships.

For growing Small to Medium Sized Enterprises (SMEs), in particular, the decision to file patents in foreign jurisdictions can be a strategic step on the path to expansion. Doing so, however, is oftentimes easier said than done, and companies seriously exploring this option must be fully attuned to the complexities and costs of such a venture.

In July 2022, Gowling WLG partners Timothy Bailey and Sumiko Mori were joined by Tatsuhiko Abe and Hiroyuki Hashimoto, patent attorneys with Shiga International Patent Office, for an instructive webinar exploring the opportunities and risks associated with global patent protection.

The webinar, which captures both Canadian and Japanese perspectives, was co-hosted by Gowling WLG, the Trade Commissioner Service, the Embassy of Canada to Japan and Shiga. The full recording can be viewed on-demand below:

Transcript

Lesley-Ann: Good afternoon and evening to our guests joining us from Canada and good morning to our panelists joining us here in Japan. My name is Lesley-Ann Reed and I am the Counsellor (Commercial) & Senior Trade Commissioner of the Embassy of Canada to Japan, managing the team covering agrifood, life sciences and innovation sectors.

(Introduction in French)

Here within the Embassy's trade section, part of our mandate is to help Canadian businesses enter the markets and create partnerships with foreign companies, including by helping you protect and leverage your intellectual property. IP protection is important for your business, especially when expanding internationally. In fact, according to a survey conducted by Statistics Canada, more than half of businesses that own IP credit it with improving their success with the most commonly cited benefit being the increased value that IP brings to creating a competitive advantage, enhance reputation and goodwill. However, the survey also revealed that the most common obstacles for businesses to file for IP protection outside of Canada are the complexity of the procedures and financial costs. As a result it can be very important for companies to connect with IP specialized law firms to provide advice in that matter. So today, on behalf of the Embassy of Canada to Japan, I'm very pleased to welcome you to our first stand-alone webinar focusing on intellectual property. You will have the opportunity to hear from two leading law firms on how best to protect your IP in Japan, from Canadian law firm Gowling WLG and Japanese law firm, Shiga International Patent Office. Following the presentations we will have a question and answer session and I encourage everyone to participate actively in this session and to take advantage of the expertise that we have in our panel. So we're really excited for today's event and offering the opportunity to ask questions and I'd just like to thank all of our presenters and our moderator today for their time and their expertise that they are sharing with us for today's webinar. For our webinar participants, I hope that you'll leave today's session with an enhanced understanding of how to protect your IP in Japan and feel better equipped to do so. Before I close my remarks, I'd like to highlight a few resources available to you, all of which we'll be sharing with you by email after the webinar. First, the Canadian Intellectual Property Office has a variety of resources on IP protection, from IP 101 to expert advice. The National Research Council of Canada Industrial Research Assistance Program, NRC IRAP, offers a program called IP Assist which sums up to $30,000.00 to access IP professionals for certain IP related services, including the development of your IP strategy. Export Development Canada has resources to help you protect your IP when expanding to other markets and Canada's Business Development Bank has $160 million dollar envelope to support Canadian companies interested in IP backed financing. Throughout all of this we have Canadian law firms specialized in IP protection, such as Gowling WLG, who can assist you and the Trade Commissioner Service can help you find vetted firms in other markets, such as Shiga International Patent Office here in Japan. In addition, our Trade Commissioner network here in Japan and around the world, is always happy to help you connect with Canadian companies and if you have any questions regarding market opportunities in your specific sector of interest, please do follow up with my team after today's webinar.

It is now my pleasure to introduce our first speakers, Mr. Tim Bailey and Ms. Sumiko Mori, from Gowling WLG. Tim Bailey is leader of Gowling's IP group in Calgary. Tim routinely assists Canadian SMUs with strategies for developing a global patent portfolio and also helps them to protect and leverage the value of their brands worldwide. He was recently ranked as a top IP strategist in Strategy 300 Global Leaders. Tim has his PhD in physiology. He assists clients in various sectors and industries, including clean technology, oil and gas, bio-technology and pharmaceuticals. Ms. Sumiko Mori is a partner in Gowling WLGs Ottawa office, focusing on patents and industrial designs. She works with a broad range of clients from small sized businesses to innovative multi-national companies. Prior to joining Gowling WLG, she worked at a leading Japanese law firm, and practiced as a Japanese patent attorney before the Japan Patent Office. Thank you very much and I'd like to turn it over to now to our first speakers. Over to you, Tim and Sumiko.

Tim: Thanks very much, Lesley-Ann. I'm going to start by sharing the slide deck with everyone. Please let me know if you can't see the slide deck or if there's any issues on the audio side. So here's the title slide for our presentation, Protecting your Intellectual Property in Japan, a global law firm perspective. Lesley-Ann did refer to us a Canadian law firm, which is correct, but we also have offices around the world and we'll discuss that towards the end of the presentation. In the spirit of reconciliation and recognition of our First Nations Aboriginal partners and friends, I'd like to start with an Indigenous Land Acknowledgement. I'm speaking to you from Calgary, Alberta, Canada. Calgary is located in the homelands of several Indigenous Nations. Calgary's within the Treaty 7 Territory home of the Siksika, Kainai and Piikani Nations of the Blackfoot Confederacy, as well as the Nakoda and Tsuut'ina Nations. The territory in which Calgary is built is also the home to the Metis Nation of Alberta Region 3, within the historical Northwest Metis Homeland, and Sumiko will be speaking to you from our Ottawa office. Ottawa's now built on unceded Algonquin territory. The People's of the Algonquin and Anishinabe Nation have lived on this territory for millennia.

Our portion of discussion is to briefly talk about what is IP and why is IP important for your business. Some common challenges that we see, as a global law firm, helping our clients go international or global with their commercial endeavours, which typically have an IP bend to them and then we'll be hearing from our friends at Shiga International to give you some specific information on Japanese law firm perspectives on IP protection.

So what is IP? I think it's an acronym a lot of us here, most of the people attending the call, because you've heard this acronym a number of times. From a very high level, IP can be characterized as an intangible asset embodied in a variety of different intellectual property rights. Those rights are derived from the collective knowledge, work product and skill set of the people that make up your team. There are various different ways by which an entity or an individual can be acquire intellectual property rights. One is through invention or creation, through directed purposeful innovation or branding strategy. The other would be through collaborating with others, either through some form of joint development or cross licence. Then there's also the acquisition of IP rights through purchase. In our view IP is the currency of the innovation economy. It's one of the most valuable corporate assets that are out there. Knowledge, foresight and proactive approach to IP can facilitate the intelligent development of your products in your market, by having a knowledge of the market, but also what your competitor IP may look like. So an example of this is the image I have in front of you here. So through our portion of the talk we'll be referring a few times to a generic example of an autonomous vehicle. So what I have here is what we call a top map, or a topographical map, that represents a variety of different areas in which various entities are filing for patent applications, with respect to autonomous vehicles. So the white areas would be, if you will, the white snowcapped top of the mountains and the blue regions would be the lowest regions, where there's the least amount of published patent applications. You can see that there are various peaks, each representing a different sector or portion of the autonomous vehicle market. So having this knowledge you're able to drill down further into the data that's available and have a better appreciation for where competitors may, or may not, be filing patents with respect to one aspect of the autonomous vehicle industry.

Another reason why we think IP is a valuable corporate asset is because it allows holders to use as a lever to secure finances for company growth. One example within autonomous vehicle industry was Aurora acquired Zoox for $1.2 billion US just a few years ago. There's a litany of these examples of these types of deals that are happening and the acquisition of IP rights are what underly the ability of the purchasing party to have some confidence that the rights that they're acquiring support the technology and the products they want to bring to market. Another reason why, and I've just provided three but there's certainly a long list of reasons why we see IP as being a viable corporate asset is, IP can be used to attract and solidify partnerships. One of the, it's now kind of a dated example, but the Rockstar consortium, which was originally Rockstar Bidco, was a consortium for Apple, Blackberry, Ericsson, Microsoft and Sony, whereby all of these parties came together and bought all of the patent assets of Nortel, a former Canadian technology success story, and they did this in a way to build up the portfolio in order to protect themselves and each other from a variety of potential IP risk.

Another reason why IP is important, and here's some more empirical data that supports some of Lesley-Ann's earlier comments, we know that for small to medium size enterprises in Canada, SMEs that hold a formal IP, meaning some form of IP registration or application for registration, are 60% more likely to be a high growth, are 4 times more likely to export out of Canada. They're 3 times more likely to expand domestically and 4.3 times more likely to expand internationally. I think these stats, this data, supports the rationale for why a lot of people are attending the call with us today.

So we think a critical step for, once we have a generic understanding of what intellectual property is and the rights, we think a critical step for parties that are looking to secure the benefit of some of those previously mentioned advantages for having IP protection, is to develop an IP strategy that's aligned with your business strategy, to contemplate what's happened in the past, what's happening now in front of you and to contemplate what's happening in the future. So this is an important way to convert the intangible value of intellectual property rights into commercial value. Here's a quote from Jim Balsillie, saying that,

I've never met Mr. Balsillie but if I did I would shake his hand, and thank him for providing such a great quote for topics like this, when we present them to members of the public. So the next critical step, once you've realized that or hopefully beginning to convince you that performing an IP strategy that aligns with your business strategy is important, you need to go through the steps of identifying what IP you may have through some form of internal audit. In order to do so, very briefly go through the five categories of intellectual property rights. First one being patents which protect inventions, which are new and unobvious articles, compositions of matter and processes. Patents provide a 20 year term, typically, which allow you to enforce or prevent another party from practicing what your invention is as defined by your patent claim. Trademarks are a manner by which you can protect your brand, including domain names, including logos, slogans and company names. Copyrights protect artistic works and is becoming more and more important these days because software code falls within the definition of artistic works, and this is a region where I think I'm beginning to see my practice much more focuses getting into copyright, in terms of protecting software on a transactional side. I'm happy to answer questions about that if people have them. Industrial designs protect the aesthetic look and feel of produced goods or articles. In the US these are called design patents, but effectively they're for the protection of the same types of articles. Then the fifth category would be trade secrets. These are the steps, procedures, mechanisms that a party or an entity puts into place to help keep their secrets a secret, whether that be through contract, how they manage their internal workforce.

So going back to our example of an autonomous vehicle, here you can see a Venn diagram where we've got the overlap between these five buckets, or categories, of intellectual property where software would be available to be protectable under copyright. Patents would be protecting the inventions, so some form aspect of the car, the way it works, its methods of operation. Trade secrets could protect, for example, some of the more nuanced architecture of the software platform. Industrial designs could be utilized to protect the design of the actual vehicle aspects, the interior of the car, what it looks like, what if feels like and then trademarks would be used to protect the logo and other aspects of the brand. In general I think that a strong IP strategy is one that mirrors the IP assets that an entity has and the business plan that the entity has. If there's discord between the business plan and the IP strategy, then I think it's time to revisit the IP strategy to make sure that your business objectives are being supported by your IP strategy. Now I'll pass it over to Sumiko who will discuss registrations.

Sumiko: Thank you, Tim. In this section I will briefly talk about the timeline to register a product. We will also look at global strategies to extend patent protection outside of Canada and speed up the registration process. So let's look at the timeline for the patent registration. The graphic we are showing you is a simplified registration process. This process has the following steps; drafting, filing, examination and grant. The first step is drafting a patent application. In this step the patent application is created to describe the invention and define the scope of protection the applicant seeks. One point to keep in mind is that the patent application is a highly technical and legal document. If your patent application is not well drafted, it may make the examination process harder, and it may not be able to provide the scope of protection you want. The next step is filing. In this step the patent application is filed with the patent office, such as Intellectual Property Office in Canada, and required the filing fee is paid to the patent office. In some countries examination fees need to be paid. These official fees are country or region dependent. The next step is examination by the patent examiner. Once the examiner gets the application, the examiner reviews it for compliance with already granted for patent. The requirement includes novelty, non-obviousness and other stuff. Novelty means it was not available to the public previously. Non-obviousness means it is not obvious or with those who practice in the field of the invention. The examiner conducts a search of existing technology in order to determine novelty and non-obviousness. If the examiner believes the application does not comply with the requirement, the examiner will provide ... The applicant will have an opportunity to reply to the ... The applicant may need to renegotiate with the examiner the scope of the claims defined in the application and amend a claim, or claims, in the application. The examination process may take 2 to 5 years or more. If the examiner examines the application and believes it comprised with all requirements, congratulation. The examiner allow and then a notice of owner is issued. If you pay a final fee the patent is granted. A patent gives the owner up to 20 years exclusive right to exclude others.

There are no global patents. That means if you have a Canadian patent it gives you the exclusivity in Canada only. So now let's look at the option to obtain the registration in Canada and outside Canada. For this discussion we will ask you, you first file your application in Canada. There are several options extending your protection in other countries. These options include patent corporation treaty, or PCT for short; patent prosecution highway, or PPH for short; and Paris Convention. There are similar international treaty existing for trademarks and the copyright we don't talk during this session. So next slide shows example of the patent corporation treaty and PCT system. The patent corporation treaty is longer than the PCT application, the process. But let's talk about the Paris Convention first. That is a fast one. The Paris Convention gives you 1 year from your inter-filing in Canada to file application in other countries, such as Japan and the US. Under this system your new application will enjoy the inter-filing date in Canada. That is known as the right of priority. Next, to the diagram showing the PCT system. Under the PCT system you will file a single PCT application in Canada. This application is an international application and will be treated as your inter-filing in Canada and over 150 other members countries. One of the benefits of using PCT application is you will receive such report and written opinion. ... and the wheel on the slide refer to such report and written opinion. They indicate if the PCT application meets novelty and non-obviousness. Another benefit of using the PCT is that you will have up to 2.5 years to decide if, and where, you wanted to obtain a patent. The PCT system does not grant a patent. If you choose a country, the timeline showing before the slide, start with the status from the second step, filing. There's also the strategy to combine the Paris Convention and PCT.

The next slide shows the table. The table we're showing you provides some pros and cons of using the PCT system and the Paris Convention. As I mentioned to you that if using the PCT system you receive opinion regarding the patentability and also you will have additional time to decide if, and where, you seek protection. Having said that, PCT will be useful if you wanted to take the time to consider protection of your technology outside Canada. The next slide shows the patent prosecution highway. PPH for short. The PPH is designed to share raw product among multiple member countries or region countries. Under this system, if you file the Canadian application and it is allowed, you can request advanced examination in other countries by using the allowed Canadian raw product. Alternatively, the PPH can be used in combination with the PCT system. As mentioned, the PCT system provides you with an opinion on potential patentability of the invention. Through the PPH, if your PCT application receives a favourable opinion, you can use it to request advanced examination in each country of filing. Considering the benefit of the PCT system, it will be efficient to use the PCT system and the PPH to get protection outside of Canada quickly. Here I focus on patent as they can be one of the most important asset to protect your technology. At the end of the presentation we will provide a link to our online results where you can explore the topics covered here and other things like trademarks. Now I will hand over to Tim.

Tim: Thank you, Sumiko. So now I'm going to talk about the contractual aspects that relate to IP. So as a general definition, contracts are an agreement between two or more parties, where the parties set out their mutual promises to each other and it allows them the ability to allocate risk between them as they, for example, do business together. Contracts are relevant to this discussion because they can be used as a mechanism or a means by which to acquire IP rights. Contracts between a corporate entity and its employees or contractors often include very important terms with specific legal language, in it that conveys the rights that an individual may have as an employee or contractor to the party that's paying their salary. It also allows the parties to identify who owes what to whom and other forms of these contracts can be licencing agreements or purchase agreements, which I referred to earlier. Contracts can also be used to share IP rights between parties in an effort to spurn collaboration. So co-development agreements are one form of these agreements, that are joint development agreements, that a variety of different titles for these agreements, but effectively it's the same idea of how two parties or more can make promises to each other; how much they will collaborate and allocate the risk that may arise under that collaboration. Franchise agreements are another example of how there can be a sharing of IP rights between parties.

The other portion of our discussion that we wanted to talk about was to share some of our initial sort of high level thoughts on the challenges that face Canadian companies when going global. With respect to global IP rights, there are a variety of complicating factors that may be present, depending on which country it is that you want to go into. So my comments below are provided as general comments, but each individual country that you may be considering entering into as part of your global strategy, has to be identified and assessed on a piece by piece basis. So one example of a unique domestic IP law is the United States. For the United States Patent and Trademark Office, the application on a patent application has a duty to disclose to the patent examiner any prior art references. So publicly available documents that may be relevant to the patentability of their technology or the claims that they're using to describe their technology. Furthermore, I have as a second point, grace periods. Some countries provide no grace period, so that if there's a public disclosure of an invention prior to the filing of a patent application, then it's likely that any patent that is granted in that country could very well be invalidated if there was no grace period provided. However, in other countries like Canada and the United States, there's a 1 year grace period from a public disclosure in which a formal patent application has to be filed following one or more of the strategies that Sumiko just mentioned, in order to allow the inventors the ability to publicly disclose their invention but still have the opportunity to try and secure patent rights for that technology.

Other considerations that are important, and that we also often talk to our clients about when they're considering going global, is having an understanding of where the invention, if we're talking about inventions, has been made. Some countries have what are called foreign filing licence requirements. A good example is that in today's day and age where people are working remotely, and there's less integration and incorporation of people's ideas in one given place because we have Zoom meetings and what have you, there can be a portion of an invention that actually may be made outside of Canada. Some countries outside of Canada have what are called foreign filing licence requirements. This means that if you're collaborating on an innovation with someone who may be sitting in the US somewhere, you have to assess whether or not the United States Patent and Trademark Offices foreign filing licence requirements are triggered, and whether or not you need to fulfill any obligations under those licence requirements, otherwise a US issued patent may be invalidated for not meeting those foreign licence requirements. Typically these are in place to protect development of innovations that relate to very sensitive types of innovation technologies such as military applications and the like. The other issues that complicate going global relate to translation costs. Patent applications are technical documents and they can be quite large and so translation costs are often something that has to be assessed before you determine which countries it is you want to enter your patent applications into. Then there are other further jurisdictional specific requirements. For example, in some countries if your patent application contemplates the use or incorporation of any natural resources, you have to make a statement in some jurisdictions that those natural resources are not protected in that country, as are contemplated for incorporation in your technology.

Complicating factors, with respect to contracts in particular, relate to what we call in the legal world, conflicts of laws. How does a court in one place assess the contract that was drafted elsewhere? So this is an important consideration for understanding when you're going through the process of drafting and negotiating an agreement, how do you want to address the implications of conflicts of laws? Furthermore, dispute resolution is a particular portion of a contract where it sets out the procedures by which parties will try to, amicably hopefully, resolve any dispute that may arise under the agreement. There can be a variety of different types of dispute resolution mechanisms. Those that explicitly dictate which will be the local law that applies to the interpretation of the agreement. Perhaps there will be international arbitration rules that will apply and also where the locations of the proceedings can occur. Again, these are things that you want to think of ahead of time, proactively to consider, so that you're not signing onto an agreement where proceedings may be occurring in a different language, in a different jurisdiction than where your comfortable participating. Then of course, across nations around the world, there's different languages and so translation of key provisions in the contracts can be very important, to ensure that the parties actually understand what it is that the other party considers relevant and important to the agreement.

So to summarize, I think these challenges can be met proactively. The first thing to do is find the right market for your business. Find out who to do with business with and where. Once you're able to do that, and I think a lot of people on this call are certainly considering Japan as the right market, or they're already in Japan perhaps, you need to prepare your company and your technology. One way you can help prepare your company and your technology, in addition to what Lesley-Ann referred to the resources available on the CIPO website, is our firm has a website called GoXL. It's effectively an online school where people can attend a variety of different courses and learn about the basics of branding, how to streamline the patent application process, whether to patent or keep it secret, and there is also a variety of courses on patent filing strategies. The URL is provided there if you like to attend and learn more about how you can proactively prepare yourself for things like taking your patent portfolio global. The other thing to consider about preparing your company has to do with ensuring that your company structure addresses the potential international business, through arranging your company appropriately, having the appropriate contracts in place. A common issue I see with my clients has to do with how they can move money, or even their IP assets, between companies. That may be a company setup in Canada and a company set up abroad. There are oftentimes tax implications with simply transferring a licence or assigning the IP rights between companies that may be controlled by the same entity. Additionally, there may be foreign tax issues to address and regulatory issues to address; whether or not you can bring your product to a market in a particular jurisdiction and what rules you have to meet to be able to do so.

We think that finding the right Canadian firm can help assist you with item number two above in getting set up and prepared for going global. Our firm, I think, is well suited for this. We have a number of offices in Canada, you can see on the right hand side in red, and then we also have a number of offices in Europe, in the Middle East and through Asia. I personally, my practice, I work with many of these offices helping our clients with their international global commercial needs, technology needs and intellectual property needs. In our firm, in the last few years, we filed over 14,000 patent applications with over 250 of them in Japan, over 22,000 trademark applications and over 240 of those are in Japan as well. So, again, I think we're well suited to help out if people have further questions or needs with the specific questions of IP, intellectual property, commercialization of technology in Japan. I think the last part that's important is finding the right partner and the places you want to go. So this provides a segue for our friends at Shiga International Patent Office to take over the presentation and provide some more specific details on Japan and IP.

Lesley-Ann: Thank you very much, Tim and Sumiko San, for your informative presentations. Our next speakers are Mr. Tatsuhiko Abe and Dr. Hiroyuki Hashimoto, from Shiga International Patent Office. Mr. Abe is a senior council at Shiga International Patent Office and he has 25 years of experience in intellectual property practice. Dr. Hashimoto is a senior manager of Shiga. He specializes in mechanical and civil engineering, especially in general machinery, fluid machinery, heat exchangers, optical fibers and control systems. He has a wide knowledge of Japanese patent practice, as well as oversees patent practice, and regularly presents lectures on a wide range of IP topics at foreign IP organizations. I also want to, again, extend a special thank you to both of them because they were both up early this morning to be able to log in at 6:30am, here in Tokyo, so many thank you, again, for your enthusiastic participation so early in the morning. I will know pass the floor over to Mr. Abe and Dr. Hashimoto. (Japanese language)

Mr. Abe: Thank you, Lesley-Ann, for introductions. Good morning from Tokyo, heat wave island. The Gowling friends already gave you explanations about what IPs are. The first topic is an overview of Japanese IP system and what IP rights protected in Japan. So there are various ways to classify IPs but this slide shows the right to be registered at the Japan Patent Office, JPO. Patent design, trademark, these rights should be registered at the JPO after filling and examining. That is also a utility model system in Japan but it's not useful, unlike in Germany or in China, so I will skip about it. On the other hand, the copyright unfair competition prevention, geographical indication, this can also be protected in Japan. These are not necessarily registered at the authority, although copyrights can optionally be registered. The patent, trademark, designs on which are registered at the JPO can easily enforce because you can easily prove the existence of the right. On the other hand, there's copyright unfair competition prevention, geographically indication, it can be protected but maybe difficult to prove the existence of the right to protected. Therefore, maybe sometimes difficult to enforce it. Then today's presentation recognize mainly focused on patents, however, some ... audiences may be interested in global brand protection and I briefly explain about brand protection in Japan. Such brand protection can be mainly obtained by trademark rule, unfair competition prevention rule. Again, trademarks needs to be registered at the JPO and it's easy. Once it is registered you can enforce it by claiming injunction or claiming domains based on such trademark rights. But if you don't have a trademark registered right in Japan you need to prove that you're indication, your mark, is well known or famous in Japan in order to enforce your unfair competition prevention. So it may be a little bit difficult.

The next right shows how creation protection in Japan. I explain that patent designs, trademarks can be registered at the JPO. Among them the patent designs are directed to creation. On the other hand, trademarks are ... as selection in Japan. Not the creation. Technically. Theoretically. In the case of technical idea you can protect it with a patent, injunction or damage can be obtained based on the patent law. If you create a design it can be protected by design, and again, you can enforce it based on the design law. If a design is not covered by that design law then you can, again, use unfair competition prevention law for limited times and conditions. Trade secret cannot be covered by patent or design. It's difficult, however, it can be protected by unfair competition prevention law. However, in order to be admitted as trade secret, three requirements. Confidentiality management, usefulness, non-publicity are required. You should be very careful about it. Then other various IP rights can be protected in Japan by hearing after this ... now mainly focuses important and I will pass it to Dr. Hiroyuki Hashimoto, next.

Dr. Hashimoto: Thanks, Abe. Hello. This is Hiroyuki Hashimoto from Shiga International Patent Office in Japan. This chapter 2 I'd like to talk about differences in registering IP in Japan, compared to other jurisdictions, especially focusing ... from the point of view of fastness, easiness and subject of protection. I'd like to start off from the fastness. This slide shows the schematic flow of obtaining patent. As Ms. Sumiko of Gowling explained in Canadian part, the general flow of obtaining patent containing ... major process, that is creation of invention, filing patent application and the communication with patent office and obtaining patent. The general rule is almost same, whereas Canada and Japan, but there's communication with patent office is little bit different, or specific in Japan. Here in Japan, it is necessary to find a ... for examination in order to assert the ... ... of the examination of the JPO. During the examination procedure you will have several times of receiving the exception from the examiner and it's normally two times exception will be obtaining. First exception and final exception and if after responding to a final exception you will receive the final results. It may be a grant of patent or refusal of patent.

In this slide I'd like to talk about the timeline. How long it will take for two different timelines. One is the (A) ... request for examination to process exception and the time (B), here from request for examination to decision of grant. I'd like to make comparison between major jurisdictions in this rights. In this slide the period from (A) is listed in this column. Japan, US, IP, China and Korea. In this column shows the time period for (B), for Japan, US, IP, China and Korea. As you can see from this ... for both timeframe for (A) and (B), I'll say Japan is the more fastest country among those major countries. Next slide I'd like to talk about the easiness, so second part of this prospect. Easiness means the focusing on the successful rate for examination. This slide shows us success rate in major jurisdictions for all areas Japan, US, IP, China and Korea and this graph shows the success rate. Means it's a grant rate. This graph shows the timeframe for the success rate for each jurisdictions, starting from 2015 to 2019. You can see it seems that China is going down a little bit but the 40 other jurisdictions, like US, Japan, Korea, IP, the success rate is growing, or increasing, year by year. It seems like the success rate in China is not so high but I think it's due to the high rapid increase in the number of applications. So the success rate or examination is not in line with the increase of number of applications. So this might affect this number but, in general, the success rate is growing for major countries.

Here I'd like to talk about subject of protection. As Mr. Abe mentioned that having protect invention and scope of invention and exception are mostly similar for all jurisdiction but slightly vary in different jurisdiction and especially comparing with Canada and JP it's a little bit different for the definition of invention. As you can see from this slide the definition of invention in Canada is similar to that of in the US. But Japan, the definition of invention is slightly different, as described in this slide. When we ... we care about protect our invention, which can be covered by patent, for in Canada and JP. So between Canada and JP it's common that method of treating human is not patentable for both Canada and Japan, but you should be care about the ... diagnose and ... and software ... ... protein animals ... on humans because those subject matter is treated in a different way in Canada and Japan. Because in Canada ... diagnosing human can be protected by invention but it's not in Japan. But for the softer ... or ... animals that on humans it's protectable in Japan but it's not in Canada. So special care should be taken when they invention is related to a software or medical process.

Here is the summary of this part difference in the IP Japan compared to other jurisdictions. While compared to our process as different depending on the jurisdiction and it takes 1 to 3 years to obtain a patent on ... In comparison of easiness, success rate is different in each jurisdiction and ... change with time and it's an important trend for a major countries. For comparison of subject of protection, special care should be taken when invention is related to software or medical process because it's treated in a different manner, especially between Canada and Japan. Here is the summary of the chapter 2 and I'd like to hand over to Mr. Abe for next chapter.

Mr. Abe: I intervene, again, for couple of slides for the next chapter on what do Canadian companies need to pay attention to. This slide is directed to attentions to be paid when obtaining a patent right in Japan. It means protecting your own right in Japan. So it's accepting nothing is difficult. Probably the audience is usually fast filing in Canada or sometimes maybe in the US, first. In such case then through your local agent, definitely Gowling, then filing in Japan via PCT route or Paris Convention route, as Gowling friends explained a moment ago. Of course you need to secure the patent visibility and in ... applicability as explained in the previous chapter by Hiroyuki, but nothing is, again, difficult. After all, Japan is not a very ... country and friendly to affording applicants. However, there are especially two critical deadlines. You shouldn't miss them. One is Japanese national phase entry deadline. 13 months from the priority date otherwise decrease the force of substantive examination. It is 3 years from the filing date. So in other words, 3 years from the international filing date as well. So JPO is ... quite as strongheaded, stubborn to the ... of that right. So please pay special attention to keep these deadlines. However, the next April on the rule where we a little bit changed on to ease registration. The next slide, on the other hand, regarding how to handle further party's rights for Canadian companies. Attention to be paid in order not infringe competitor's patents in Japan, otherwise even if you come at a great idea, great product, you cannot do business in Japan. So please carry out regular prior search by yourself or through another channel. Then once you own the registered Japanese patent right is found, which is quite relevant, then you should take proper steps in order to invalidate them, or sometimes licence negotiations may be necessary. If the third party right is not yet registered and that's still pending, then we recommend you to keep monitoring on the status thereof. Once it is granted then go to the second step and take necessary counter-measures, please.

Then this is quick explanation of chapter 3. Back to Hiroyuki.

Dr. Hashimoto: Thanks, Mr. Abe and time is flying and here is the final chapter of our presentation. In this chapter I'd like to talk about the IP enforcement in Japan which might be interesting and very crucial for the Canadian company who is considering acquiring the patent application in Japan. This final chapter anchors where the three parts. First one is overview of enforcement of procedure. Second one is effective measures and taking about preliminary injunction, and the last one is the arbitration or mediation process. I'd like to start off from the overview of enforcement procedures. There are four steps when you find patent infringement. The first one is determine if the patent infringement really occurs. Second one is preparing and send a letter of warning to the patent infringer. Third one is having a conversation with the potential infringer. Last one is if the conversation breaks down, then finally, lastly, the case should be brought to the court. It means the filing infringement lawsuit.

This slide shows the explaining about the overview to determine if the patent infringement really occurs. The scope of protection is clarified by act 17 of Japanese Patent Law. It means the scope of protection is clarified based on the claim. What is described in claim of the application. But we are of ... one or ... There are three. This means the restriction of exercise of right by the patentee. This kind of exception is existing so care should be taken this kind of exception. But basically in this court is determined by the scope of what is described in claims. Second step is to identify the products or ... in concern. For ... claim, sometimes the applicant thinks that it's very difficult to specify what is carried out at the potential infringer. But the requirement of one or four is two. This mean a redemption to clarify specific circumstances of it's various similarity in duty of disclosure in US or Canada. And also, doctrine of a grievance can be applied for identifying a product or ... Finally, making analysis if the ... ... is included in the scope of protection.

Next step is the paper and sending letter of warning to potential infringer. Paying attention to the contents of the letter is the patent like should clarified by patent number and described ... of the patent. Important point is that it is not recommended to include emotional message ... on inquisitions. This kind of message may obtain impact when the case is brought to the lawsuit and determining to prove the letter, a warning to be sent. Potential infringer is recommended ... to send letter but care should be taken that letter should not be sent to client of the potential infringer. There would be a risk to violate the Unfair Competition Prevention Act and it's coming from the case law from Japan. So the person to whom the letter would be sent should be very carefully selected.

Next step is the administration is the potential infringer. It means the case should be subject to mediation or arbitration but I discuss in the other section. Finally, if the mediation breaks down and the case should be brought to the court, and patent infringement lawsuit in Japan, is handled by Tokyo District Court or Osaka District Court. Here is the last outcome from the lawsuit of the patent infringement lawsuit in Japan and this part shows the case from court. It means the judgment and this part shows the results coming from settlement ... ... So from this graph you can see the acknowledged case is not so high but taking this part into consideration, in which the settlement is successful, so the overall successful rate is not so low in Japan. I would say the patent right is enforceable in Japan.

The next part shows the effective measure of preliminary injunction. This is a very special technique to enforce your patent right because, in general, the patent infringement lawsuit takes much very long time and it's compared to the general civil action. It's much longer for patent infringement lawsuit. But sometimes patent right must be protected much faster than preliminary injunction could be wrong action to actually fast protection of patent right. If you use the preliminary injunction you can receive the results very fast compared with the infringement lawsuit because normally it takes more than 1 year for infringement lawsuit, but if you use preliminary injunction, you can receive the results less than a year. About a month. In preliminary injunction, if you win the process, you can enforce a judgment immediately. So it's very effective and fast. Difference between preliminary injunction and infringement lawsuits, are, in the case of infringement injunction, if there's a petition from infringement side, then ... a must for infringement action along with it. Preliminary injunction witness integration cannot be performed. In preliminary injunction it is easy to keep matters being raised and confidential. In the preliminary injunction the doctrine of grievance cannot be claimed. So in the case law ... ... is used. You want to enforce a judgment promptly and you want to keep a case confidential. In the case of preliminary injunction, in order to ... pressure on the defendant after an infringement ... in the plaintiff's favour in the infringement lawsuit. So filing the preliminary injunction for the purpose of advantageous settlement. So this is one option to enforce your patent right in Japan.

I'd like to quickly go through the brief idea about arbitration, mediation process in Japan. As an alternative to litigation the parties may agree to settle their dispute through alternative dispute resolution. It means ... such as mediation or arbitration. ADR anchors the two types of procedure. One is adjustment type, including mediation and compensation. Another one is determination type, including arbitration and determination. These are the advantages of ADR; non-disclosurity, ..., expertise, promptness and international authorities. Possible reason why the number of litigation in Japan is so low is that high costs, amount of damage compensation is not sufficient, high likelihood to lose lawsuit and not very enforceable in litigation. Because Japanese national characteristics, ... and interest tend to abhor disputing in court. So ADR has high infinity for interested Japanese party. Let's say the companies.

Here is the specifics of the arbitration or mediation process, ... But there are three types of ADR; civil type, justice type and administer type. But I'd like to skip this slide due to time limitation and I'd like to go onto the last slide of tips for SMEs, Canadian SMEs. Negotiation would be your first choice when your enforcing patent right in Japan, and if the negotiation does not go smooth, ADR can be used to facilitate the negotiation. Preliminary injunction can be utilized for conducting negotiation. Here is all of our part and thank you for your attention. I'd like to hand it over to the facilitator and I'd like to answer your question, if you have. Thank you very much.

Lesley-Ann: Thank you very much, Abe San and Hashimoto San, for that very informative and comprehensive presentation. I would now like to introduce the moderator for today's question and answer session, Ms. Kathryn Szymczyk. She is the Senior Business Development Manager for Gowling WLG's global intellectual property group. Kathryn supports the harmonized strategy of their 13 offices across Canada, UK, Europe, Asia and the Middle East. Prior to her move to the business side of the law, she was a practicing trademark lawyer herself in Gowling WLG's Ottawa, Toronto and Moscow offices. Kathryn, over to you.

Kathryn: Thanks so much, Lesley-Ann, and this takes us to my favourite part of webinars, offering free legal advice. So I hope that all of you have a lot of questions. I see in the Q&A some of you have already typed in some questions and I will read those aloud and ask some of our panelists to answer them. But I do encourage you, as well, to take advantage of the raised hand function on the bottom of your screen. That will enable me to call upon you and you can unmute yourself, and even allow us to see you, and ask your own question, live. So if anybody would like to do that, we will keep on eye on the attendee list. But in the meantime I'm going to start off with the first question in our Q&A, which was from Mark Romanesh. He wondered whether their grace periods in Japan, as they related to prior disclosures by inventors, he wonders if we could speak a little bit about that. Perhaps you, Dr. Hashimoto, could answer that question?

Dr. Hashimoto: Thank you, Kathryn, and I would like to answer this question. Actually, there is the grace period system in Japan, but it's a little bit different from that is existing in the US and Canada. Here in Japan we have a grace period system. It means if the invention is disclosed by the action of the inventor itself, you can file the invention within 1 year after the date of invention. Very typical is adopting the absolute novelty system. So once the invention is disclosed, in the end the ... is destroyed. But if the novelty destroyed action is made by inventor himself, then JPO ... the applying the exception for this kind of action. Then you can have 1 year time period from the date of disclosure to filing the patent application. Then you can use this kind of respite in Japan. I hope this answered the question.

Kathryn: Yes. I hope, Mark, that answers your question. If not please feel free to raise your hand and ask a follow up question. But in the meantime we have a couple of questions from Mark Vanderbeeken. I see, Tim, that you answered that question in the Q&A. Did you want to just make some follow comments to that?

Tim: Ya, I think so. So the question was, why file in Canada first rather than file at the USPTO, taking advantage of what's called a provisional patent application. As I tried to articulate, at least in my typed answer, we certainly do file a lot of provisional patent applications on behalf of our clients. I think it's always a fact specific scenario that determines whether you want to file a US provisional first or whether you want to file another formal application first, as your first filing. Scenarios where provisional applications applicable are certainly when perhaps someone is about to go into public disclosure scenario they can't avoid. For example, if they're about to make a pitch to investors and the investors won't agree to sign a non-disclosure agreement, or perhaps they're going to participate at a conference. I've even had someone approach me for some advice the day before they went on a TV show, and I won't name here, it rhymes with Braggens Bren, and it's a show where people go and pitch to potential investors. So I gave them some advice as to how to try and mitigate, or reduce, what they actually disclose during the taping of that show. So those are scenarios where finally a provisional makes sense because you're trying to secure your first filing date as soon as possible. However, there are other scenarios where filing a formal application, for example in the US or maybe Canada, or the PCT makes sense as well. For example, if the client's eager because they're aware of potential competitor. They want to get enforceable rights as soon as possible.

Kathryn: Thanks, Tim. There's another question while I have you in the spotlight. There's another question that's very near and dear to my heart, having practiced trademark law myself, and that is, and Tim I'll ask you the first part of this question, whether you find with your clients, because I know that you practice trademark law as well, that having a trademark registered in Canada and the US, are there any advantages or benefits when they go to register elsewhere? And then I'll ask about in Japan in particular.

Tim: Well similar to in patents how you can have an earlier filing provide a benefit to later filed applications, the same thing can happen if you have earlier filed application in Canada of the US. Then within a certain timeframe you can file in another jurisdiction and claim priority back or the benefit of that earlier filing in Canada. So what that means is that if you file in Canada on July 1, 2020, and then you're seeking to file in another jurisdiction after that date, if you file within the prescribed amount of time, let's say it's 6 months, then the examiner in that subsequent country, so if the file in the US second, they won't be able to raise anything that may have been publicly available on the trademark data base against your originally filed application, because you can rely on the earlier filed Canadian application. I think my colleagues and friends in Shiga would be able to answer to the specific Japan question.

Mr. Abe: Regarding this question, there is not advantage even if you have a registered trademark alright in Canada or in the United States. ... trademark examination in Japan, however, if your trademark is well known in Canada or in the United States, such fact may prevent other party's similar trademark application in Japan to be rejected. So that may be one benefit. So may not be as satisfactory answer but this is my comment.

Kathryn: Mr. Abe, the follow up question to that was, how long does it take to register your trademark in Japan? Approximately.

Mr. Abe: Depending on the ..., if it goes quick and smoothly, definitely less than 6 months. However, if there is a similar application, conflicting third party's application, then it will take longer. However, the trademark prosecutions in Japan have quite quick now.

Kathryn: Wow, correct me if I'm wrong, Tim, but that's a lot faster than in Canada at the moment. Moving on to the next question, from Paul Cheng, and I think this will be for our friends at the Embassy. Paul Cheng wondered whether, he's just talking about how the legal expenses are getting very expensive. I guess he's filed in a number of countries and he's wondering whether the government will help with filing fees and also how to make contact with Japanese steel manufactures.

Lesley-Ann: I'm happy to take that question. So in my opening remarks I mentioned that there are some government programs to assist Canadian companies with IP. One of them that I mentioned is the NRC IRAP IP Assist Program, which allows up to $30,000.00 in funding. The key points to know about this particular funding is it's $10,000.00 to define an IP strategy. $20,000.00 to assist with implementation. However, it does not include costs for drafting and prosecution of patents, or patent office costs, or filing fees, or legal opinions. So there are a number of elements that it does include though, including an IP audit, competitive analysis, background art search to determine freedom to operate. So there are aspects of that program which might be able to assist with reducing some of the costs related to properly protecting your IP internationally. The key here is that it would be important to contact your IRAP advisor, if you have one, and if you don't have one we have a phone number to help you get on. That information will all be shared. After the webinar we'll be sending it out to all participants. In terms of connecting with Japanese steel manufacturers, that's something that our office, the Trade Commissioner of Service, we're happy to assist with and we will have the officer responsible for that sector get in touch with you directly to learn more about the type of company you're interested in connecting with. So we'll follow up with you by email after the event. That offer goes for any of the companies on the line. If you're interested in meeting with Japanese business partners, please do contact us, and we will connect you with the right sector officer.

Kathryn: Wonderful. Thank you, Lesley-Ann. I think following up on the first part of your answer, perhaps it's a good time to ask one of the questions that came into us in advance of this webinar, and that was, what is the cost estimate to process a patent in Japan, including legal and patent office fees?

Dr. Hashimoto: It is the total cost or? I'd like to clarify the question.

Kathryn: It's the cost estimate to process a patent in Japan. I guess to prosecute it through to registration.

Dr. Hashimoto: It's very difficult to answer because it's very depending on how many times do you receive the actions. Normally, maybe, it's roughly

Kathryn: We're not going to hold to you to it.

Dr. Hashimoto: There are millions of pennies, Yen in total, until they go out would be the rough estimate.

Mr. Abe: Currently Canadian dollars, US dollars are quite strong against Japanese Yen so it's the right time to file an application.

Kathryn: There you go. Unfortunately I don't have a conversion calculator in front of me but sounds like it's about a million.

Dr. Hashimoto: One comment regarding this point, because it's very depending on the process, how we are responding to the exceptions. So normally we were prepared our comments, our ... to the applicant how what is written in ... and we make a proposal to overcome the ... action. It cost much about piece because we are using time and make analysis but analysis is made by applicant you can reuse the amount of piece. So it's one option. So whereas for specific amount, please feel free to consult us. We're always happy to provide you the quotation for each case.

Kathryn: Thank you, Mr. Hashimoto.

Lesley-Ann: In terms of the conversion, sorry to jump in, it's roughly about $10,000.00 Canadian right now. One million Japanese Yen.

Kathryn: Thank you. Thank you.

Mr. Abe: Really? That much?

Kathryn: Yup. That sounds about right. Following up on that question about costs, there was a question from Jane Ritchie. She asks, does the JPO offer government fee reductions for small entities and what constitutes a small entity patent applicant in Japan?

Mr. Abe: Yes, they do, however, I don't have a detailed paper here so we can answer to on this question later on in more detail.

Kathryn: Great. To everybody, we will be providing the email addresses and phone numbers of all of our panelists. These presentations will be available to you to, I believe, will be sent with that email Lesley-Ann is referring to. So we do encourage you to follow up by email.

Mr. Abe: Yeah. But definitely SMEs can enjoy government fee deduction on the certain terms and the conditions.

Kathryn: Great. We have another question here about actually custom clearance. It's about that a question/answer period during the custom clearance procedure in some jurisdictions, like us, and Merry Teckle is wondering if it's challenging custom clearance for Japan and how that would work with language barriers?

Dr. Hashimoto: I'll say there's a lot of ... for a custom clearance but for elsewhere different than trademark and patent. For trademarks it's very easy. Or design is easy because the staff at customs can easily find the product but for the patent side, it's not. Sometimes difficult. But in general it's effective and we are always using the services and we obtaining the satisfactory results in Japan.

Kathryn: Right. Okay. Thank you. And another question we had in advance of today's webinar I know was, whether you can reduce the translation cost, that Tim spoke about, by using AI software when you are filing in other non-English speaking countries. Sumiko, did you want to address that question?

Sumiko: Yes. So now AI software has been developed and improved and very, very getting better but, from my point of view, still it's not accurate. Also this is what I said is that very technical on the legal document. So we are very careful to take care of those document. That means that if you're going to Japan and you want to do something in Japan and create document, or you are create document best in English, I think I would recommend using the profession like Shiga. Because they can proofread actually and also there's a very, very possible risk to reduce what you can have, what you are entitled.

Kathryn: The scope. The scope of your protection.

Sumiko: Yes. Exactly.

Kathryn: That's great. Well I'm just realizing that we've come to the end of our Q&A. That went by very quickly, and as we mentioned, that we do have the email addresses and phone numbers of our panelists that Tim will show on the screen right now. They've graciously agreed to answer any questions, or if you want to chat with them further, here are their contact details. So we hope that you'll get in touch and, of course, it would be our friends at Shiga to answer any of your questions about IP in Japan. For those of you who might have questions about IP in Canada, or going global with you IP, then definitely Tim Bailey and Sumiko can help you with that. As Tim mentioned we do have a number of offices internationally so our IP team across the globe can really help when it comes time to go global. We're also a full service firm so if your needs go beyond intellectual property, we can find someone that can be a trusted advisor in that area as well, so please feel free to get in touch with me if your needs go beyond IP and Canada. Thank you very much.

Audrey:: Alright. Thank you very much, Kathryn, for this great Q&A. We're very fortunate to have had you moderate it.

Good evening. Good afternoon. My name is Audrey Jolin Lessard. I'm a trade commissioner at the Embassy of Canada to Japan and I'm also the manager overseeing intellectual property. I'll be very brief, please fear not. I hope you got as much out of this webinar as I did. I think Tim started it very well by summarizing it with this beautiful sentence, along the lines of, the fact that IP is the currency of the near innovation economy and that when you protect your IP you can use it as leverage to both grow your company and also attract and solidify some partnerships. In a nutshell, IP rights in your business may overlap and when it comes to filing your patent in Canada the process can take 2 years or more, but then it's valid for 20 years. In Japan, I personally was very pleasantly surprised to learn that the process can take as little as 6 months to file for a patent. However, we have to be careful because definitions in Japan, such as the definition of an invention, is different. So please, by all means, do not hesitate to contact are speakers to seek some professional advice. If you need some assistance, for example, to navigate the processes of the Japan Patent Office. Unfortunately we were not able to answer all the questions. Thank you for your great and active participation. But don't worry. We did write down the name of people who raised their hands or asked questions and we didn't have time to answer, so we'll be following up by email with you. My team member, Ryoko Uchida, who is our intellectual property officer will be sending you an email with again the coordinates of our guest speakers, in guess you didn't have time to do a print screen earlier, and we'll also send you the list of programs offered by the Canadian Federal Government to help you develop an IP strategy and protect your IP, more generally. So one last time I would like to invite you to join me in to thanking our guest speakers for their very insightful presentations. So today you heard from Shiga International Patent Office, from Mr. Tatsuhiko Abe as well as Dr. Hiroyuki Hashimoto, and from Gowling WLG we had Tim Bailey and Sumiko Mori, as well as our great moderator, Kathryn Szymczyk. Thank you again to all our speakers. Thank you also to our participants for the time you devoted to this webinar.

(French language)

So lastly, when you disconnect from this webinar there will be a 5 question survey that will pop up. It only takes a minute. If you could fill it that would be very helpful to us because this is the way we improve and we can offer better events to you every time. The first 5 questions are in English and then questions 6 to 10 are the same but in French. Thank you again, very much, to all of you.

(French language)

Have a good evening.

Key takeaways

• For growing businesses, IP assets – underpinned by a solid IP strategy – can significantly bolster the chance of expansion. SMEs who hold formal IP are 60 per cent more likely to be high-growth, four times more likely to export, and more than four times more likely to expand internationally.
• There are no global patents; a Canadian patent only gives you exclusivity in Canada. However, for companies wishing to expand the protection of their inventions beyond Canada, there exist several options to help expedite the process. These include the Patent cooperation treaty (PCT), the Patent Prosecution Highway (PPH), and the Paris Convention.
• Registering patents abroad can be a complex undertaking, with IP laws and filing requirements varying from jurisdiction to jurisdiction – "grace periods," for instance, can fluctuate significantly between countries. The foreign filing license requirements of some countries, which considers where an invention was conceived, must also be factored into any global patent strategy.
• Translation costs can present an additional hurdle for Canadian companies looking to register their patents abroad. Patent applications are technical documents and can be quite large. The cost of having them translated should be assessed before determining which countries you wish to submit patent applications to.
• The enforcement of global IP contracts present their own unique challenges, including with respect to "Conflicts of law" – i.e., how does a court in one place assess a contract from somewhere else? Similarly, dispute resolution is an area that must also be approached cautiously in any IP agreement. The preferred dispute resolution mechanism, the application of local laws or international arbitration rules, and the location and language of proceedings should all be set out in writing.
• With foresight, preparation and the right advisers, the complexities of a global patent strategy can be managed proactively. In all cases, a business' patent strategy should be neatly aligned with its commercial strategy with a view to ensuring that its technology can be leveraged in the right place at the right time. Canadian companies just beginning this journey should start by identifying the right markets in which to expand, as well as potential partners within those markets.

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