To conduct a patent clearance study, a patent lawyer must be advised of the details of the technology in question and the current and future applications of such technology. Since patents protect a wide range of types of subject matter, it is important that the patent lawyer comprehensively understand the subject matter to be assessed. A search for pertinent Canadian and, if necessary, foreign patents should be conducted, and the patents found should be thoroughly reviewed. The claims of the patents are examined initially to discard those with claimed subject matter too remote to be of concern. For the remaining patents, file histories should be obtained and reviewed, along with the references of record. The claims are re-examined in light of the file histories and compared to the subject matter being studied to determine if infringement exists. Both literal infringement and infringement under the doctrine of equivalents, as well as prosecution history estoppel, are considered. In certain circumstances, contributory infringement and inducement of infringement may need to be addressed. If no infringement is found, the details of the analysis and conclusion should be set forth in a detailed, written opinion. The opinion must address all of the claims of each patent considered, since the opinion is likely to be produced if litigation later arises. If the results of the study are unfavourable, then invaluable notice is provided that the product may need to be modified or withdrawn altogether, or that a license may need to be obtained. An invalidity study may also be conducted to ascertain whether the problematic patent is valid. If the patent is believed to be invalid, then the clearance can be cautiously given, because a clearance based on an opinion of invalidity is quite a different thing than a clearance based on one of non-infringement. An opinion of non-infringement is often more persuasive to the patent owner, as well as to a judge and jury, than a position of invalidity. If litigation ensues, the burden of showing infringement falls on the patent owner, whereas the burden of establishing invalidity falls on the defendant, a heavy burden since a patent is presumed valid as a matter of law. Nevertheless, patents issued by the CIPO have been held invalid. If all else fails, a patent license can be pursued.
Before adopting or using a trademark, it is important to determine whether the trademark is available for use (that is, whether the proposed mark is already being used by a third party for the same or related goods and services) and whether the mark is available for federal registration in the CIPO. In Canada, trademark rights arise from use of the mark. Simply selling goods or offering services under a trademark may give the user common law rights in that mark, in the geographic area where the mark is used. In addition, the owner of the mark may seek to register the mark in the CIPO. There are significant benefits to registering a trademark, including but not limited to the following: (1) a registration acts as constructive notice and is deemed to put the world on notice that the owner is using the trademark; (2) priority is given to the owner of a registration over all subsequent users or applicants, as of the owner's application filing date; (3) a registration is prima facie evidence of the owner's exclusive rights to the mark and the validity of its registration; and (4) owners of a registered trademark may use the ® symbol on the designated goods or services.
Where common law use of a trademark precedes another's application filing date, the common law user may have priority over the registered user and may even be able to cancel the registration. Because a registration is prima facie evidence of the registrant's exclusive rights in the trademark, it is the common law user's burden to prove that his or her use began prior to the registrant's application filing date. Because use of a trademark by offering goods or services under that mark makes one vulnerable to litigation, a mark should be cleared before use begins. Because a startup's name often also serves as a trademark, when choosing a startup's name, the search should not be limited to the provincial or federal corporation's database. Trademark searches like those described below should be conducted as well.
It is important to clear a mark before adopting and using it, or a startup may be subject to a trademark infringement action. Because of the existence of unregistered trademarks, it is important to conduct a search that looks for both registered and unregistered (common law) trademarks. Since the CIPO only uses its own database when examining trademark applications, an initial search will reveal whether another registered or applied for third-party trademark exists which would bar registration of the startup's trademark in question. If the initial search shows that no prior registrations or applications exist for the trademark, a comprehensive full search should be conducted to determine, to the greatest extent possible, whether any common law users exist. In addition to a search of the CIPO's database, a full search should cover USPTO federal registration database and all state trademark databases, use of the trademark over the Internet, and use of the trademark in the print or broadcast media. It is important to note, however, that while the search results are generally reliable, it is possible that the search service may have overlooked a pertinent reference. It is also important to recognize that an experienced trademark practitioner should be consulted before clearing the mark for use.
International Searching Considerations
In today's global economy, trade is conducted on a multinational level and, therefore, considering one's options vis-à-vis trademark usage should also include an analysis of the availability and use of one's mark overseas. Some countries, including the United States, provide free, online access to their trademark databases, thereby allowing anyone to perform an initial search within that territory. A number of trademark services such as Thomson & Thomson can also conduct more comprehensive searches, covering one or several countries or regions of the world. Some of the established trademark services maintain their own worldwide database of published marks, sometimes covering up to 200 countries, on as many as five continents. These service providers have the ability to conduct a worldwide initial search for a reasonable fee. Experienced trademark watch services even have the capacity to search for phonetically similar marks, in addition to English-word marks.