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

• Published date: 21 July 2022
• Law Firm: Gowling WLG
• Author: Mr Timothy Bailey and Sumiko Mori

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:

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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...