5 min
January 14, 2021

The #1 Comprehensive Guide to Patents

Updated:
July 24, 2024
A close-up view of a filing system with a focus on a tab labeled 'Patents.' Other tabs in the background are blurred, indicating a well-organized filing system.

A patent grants property rights by the government to an inventor. This grant gives the inventor exclusive rights to the patented process, design or invention for a specific period of time.  An individual can apply for a patent through the Canadian Intellectual Property Office. Patent protection applies in the country or the region which the patent is issued in. In Canada, a patent lasts for 20 years from the date which it is filed. 

Once an individual has filed a patent, they are able to sell them, license them or use them as assets to attract funding from investors. In exchange for these benefits, the inventor must provide a full description of the invention when a patent is filed. Details of the patent application filed in Canada are disclosed to the public after an 18-month period of confidentiality.

An invention can be either a product (e.g. a door lock), a composition (eg. chemical composition used in lubricants for door locks), the machine itself (e.g. the machine that makes door locks), or a process (e.g. a method for making door locks). An invention can also be a way of improvement of any of the inventions just listed. 

How do I know my invention is eligible for patent protection?

To be eligible for patent protection, your invention must be three things:

1. New

The invention must be new. This means that the invention does not currently exist in the world. If the invention exists, patent protection will not be granted. For example, if an individual files a patent application for shoelaces, it is highly likely this application would be denied as this invention currently exists. On the other hand, if a patent application is submitted for an invention which enhances the shoelace experience, it is possible such an application would survive. 

2. Useful

An invention must be useful to receive patent protection. To be considered useful, the invention must be both functional and operative. An invention is functional if it has a special activity, purpose or task. The invention must be designed to be practical rather than attractive to meet this functional requirement. For an invention to be operative it must work. So, for example, if an individual files an application for patent protection for an invention that does not actually work, then the application is likely to not succeed.

3. Inventive 

The final requirement for eligibility for patent protection is that the invention must be inventive. This means that the invention shows ingenuity, it is not obvious to someone of average skill who works in the field of your invention.

When should you file a patent application?

In Canada, patents are granted to the first applicant. This means that the individual who is the first to file a successful patent application will be granted patent protection for the invention. As a result, it is important that you file a patent as soon as possible in case another individual is on a similar track to you. 

Making any public disclosure of an invention prior to filing a patent application may make it impossible to obtain a patent. However, there is an exception in Canada and the United States. If the public disclosure was made by the inventor or by someone who learned of the invention from the inventor less than one year before the patent application is filed, the application may still be successful. Please note, however, that in some countries disclosing the invention to the public anywhere in the world before filing a patent application may prevent the inventor from obtaining a patent. 

Choosing when to start the patent process is a critical decision. The right time to file a patent application is ultimately based on a combination of business and legal factors, which varies for each business. If you feel that you can make the most profit by preventing others from making, using, selling, renting, or importing your invention, then you need a patent. 

For example, if Kelly invents the machine that folds your clothes for you and she determines that in order for her to maximize her profits, she needs to be only the only person who can make, use and sell this product. It would, therefore, be beneficial to Kelly to file a patent application. 

Why patents matter in biotechnology

Filing patents are also very important for biotechnology inventions. Biotechnology is a research-intensive industry with about 40-50% of their revenues in research and development. Therefore, it is extremely important for biotechnology firms to protect their research. The most effective way to do so is by securing a patent. 

Not every biotechnology firm sees a product go from design to manufacture. In many cases, small firms license their patented innovations to larger firms who have the resources capable of producing them and taking them to the market. The success of these small firms heavily depends upon whether they are able to convince those larger firm investors that they have a sound intellectual property strategy. This strategy centres on patent protection, and helps minimize risks for these investors. 

Patents are vital for keeping the biotechnology industry moving forward. As already noted, once a patent is acquired, the details of the invention enter the public domain. The invention’s description will include its advantages and claims about the product’s usage, production methods, and the product itself. This allows for competing companies to learn what other firms are doing and to be inspired to create their own innovations. 

Patents also strengthen the biotechnology firms they protect. Once secured, a firm feels encouraged to continue their research because they know their efforts are protected. These firms are also more likely to have the necessary funds if their patented goods are a success. 

Should I use a patent agent?

Patents and patent applications are difficult to maneuver. Most experts agree that inventors seeking patent protection should use services of a registered patent agent to help them navigate the complexities of patent law. Patent agents work with inventors to evaluate an invention disclosure, assess patentability, draft a patent application, and communicate with the Canadian Intellectual Property Office on the inventor’s behalf. Many law firms are registered patent agents, however, not all patent agents are lawyers. The Government of Canada notes that more than 90% of patent applications are filed with the assistance of a patent agent.

Provisional vs Full Patents

It is possible you may have come across the words “patent pending” on a variety of products. Even though it may appear that an invention has been patented, this status actually means that there is a provisional patent in place. 

What is a provisional patent?

A provisional patent provides protection on an invention for a 12-month period before a formal application is filed. The intention is to provide an inventor time for things such as pitching an idea, test commercial feasibility, or refining the product before fully committing to the expensive and time-consuming process of a formal patent application. What is important to remember here is that provisional patents are meant to be used on a short-term basis. Obtaining a provisional patent is less expensive than a full patent, and may not require the services of a patent agent.

Requirements for a Provisional Patent

The requirements of a provisional patent are relatively straightforward. They must include:

  • The application as a provisional application for patent
  • The name(s) of all inventors
  • Inventor residence(s)
  • Title of the invention
  • Name and registration number of patent agent and docket number (if applicable) 
  • Correspondence address
  • Any government agency that has a property interest in the application 

The Benefits of a Provisional Patent

  1. The inventor does not need to worry about interested parties stealing an idea. Although a provisional patent is not a full patent, if an invention is labeled as “patent pending,” this signals some legal rights if an infringement occurs.
  2. An inventor is able to test and perfect a concept prior to filing a full patent application. This is crucial as it puts an official filing date with the patent office. Remember, for a patent application, an individual must be the first to file in order for it to be granted. 

Canada vs the U.S.

Summary of the process: 

An inventor can choose to file for patent protection either in Canada or the U.S. In Canada, an inventor would first file a Canadian patent application which provides protection for 12 months. An inventor can then file a second Canadian patent application claiming internal priority over the previous application or can pursue prosecution of the original patent application. If an inventor chooses to file in the U.S., they would first file a provisional patent application granting protection for 12 months. The inventor would then file a regular patent application referring to the provisional application, or they can convert their provisional application to a regular application. The length of protection, however, does not differ between the two countries. 

Costs: 

The U.S. application process can be slightly more expensive than the Canadian process. In Canada, an inventor would pay $200 for the first application and then $400 for the second application or $200 if they are a small entity . In the U.S., an inventor would pay $130 USD, and $200 USD for every 50 pages in excess of 100 for the provisional application. If the inventor converts their provisional application they would then pay $140 USD or $70 USD if they are a small entity. If the inventor files the regular application, the inventor will have to pay $420 USD (additional fees may also apply) or $210 if they are a small entity (additional fees may also apply). 

Minimum requirements

The minimum requirements to filing a patent application also differ. In Canada, an application must include: an indication that the inventor is requesting a patent; a document in any language that appears to be a description of the invention; the applicant’s name or other identifying information; and the applicant’s address. 

In the U.S. the application must include: a written description of the invention and any drawing necessary to understand the invention. The cover sheet and filing fee are not required to be given on the filing date, however, an extra charge is applied if these are given at a later date. 

Is the content of the first application made public?

If an inventor files their patent application in Canada, the content is not made public if the application is withdrawn within 18 months of its filing. At the end of the 18 months, however, the contents are made public. 

In the U.S., however, this differs. If the provisional application is converted into a non-provisional application, the non-provisional application may be published. If this does not occur, however, then the contents are not made public. 

The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international treaty which supports applicants who seek to have international patent protection for their inventions. The PCT helps patent offices with their decisions to grant patents, and facilitates public access to a wealth of technical information which relates to these inventions. 

Filing one international patent application under the PCT allows applicants to simultaneously seke protection for an invention in a large number of countries. The PCT now has 153 Contracting States.

What is the effect of an international patent application?

Put simply, an international patent application will allow an invention to have the effect of a national patent application in or for all PCT Contracting States. If you comply with certain formal requirements which are set out in the Treaty and Regulations, adaptation to varying national/regional formal requirements and the costs associated will not be necessary. 

Who is able to file an international patent application?

The PCT is used by major corporations, research institutions and universities seeking international patent protection. It is also used by small and medium-sized enterprises and by individual inventors. 

Any inventor who is a resident of a PCT Contracting State is entitled to file an international patent application. If there is more than one applicant named in the application, only one of them needs to be a resident of a PCT Contracting State. 

How to file an international patent application

An international patent application can be filed, in most cases, at your national patent Office or directly with the World Intellectual Property Organization (WIPO) if permitted by the PCT Contracting State. If you are a national or resident of a country that is a party to the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), the Eurasian Patent Organization (EAPO), or the European Patent Convention (EPO), you may also file your application with the regional patent Office concerned, if permitted by the applicable national law. Alternatively, applicants can file their PCT applications electronically. 

PCT applicants are generally required to pay three types of fees when filing their applications: 

  1. An international filing fee of 1,330 Swiss francs
  2. A search fee which can vary from 150 to 2,000 Swiss francs, dependant upon the International Search Authority (ISA) chosen
  3. A small transmittal fee which varies depending on the receiving Office

PCT fee reductions are available to all applications who file electronically. This reduction will be based on the type of filing and the format of the application submitted. 

In most cases, an inventor will have an additional 18 months from the time in which they file their international patent application before they have to begin the national phase procedures with the individual patent Offices to fulfill these national requirements. Or usually, 30 months from the filing date of the initial patent application. It’s important to note that you are not required to wait 30 months before you enter into the national phase. You are always able to request an early entry. 

An inventor may file an international patent application in any language which the receiving Office accepts. If your application is in a language the Office does not accept, you will be required to translate the application for the purposes of the international search. 

Where do I file my patent?

Where you file your patent application depends on the geographical scope of your business, goals, competitive and cooperative strategies, regional patents, and other factors. 

Geographical Scope

It is important to ask yourself where the product will be manufactured and where it will be sold. If a product will be manufactured in China and India, it would be beneficial to have patent protection in these countries. If the primary target markets are in North America and Europe, it would be beneficial to file a patent application in these regions. 

Goals: 

Many early stage technology companies, for example, want to be bought. So, if it is a company’s goal to be bought in the U.S., then it would be beneficial to file a patent application in the U.S. 

Competitive and Cooperative Strategies:

 Some patent filings can protect a market and limit a competitor’s ability to maneuver. It is important to remember that a collaborator today can be a competitor tomorrow. So, if an inventor has a collaborator in a given jurisdiction, it would be beneficial for that inventor to file for patent protection there.

Enforcing a Patent

Once a patent is issued, it is up to the owner to enforce it. Patent law in Canada is governed by the Canadian Patent Act 1985 and related regulations. 

Generally, two types of patent infringement can be alleged in Canada: direct infringement and indirect infringement. 

Direct Infringement

Direct infringement is any act that interferes with the full enjoyment of the monopoly, or exclusivity, granted to the patent holder during the term of the patent, without the patent holder’s consent.

Indirect Infringement

Indirect infringement is an action that gets another person to infringe on a patent. Courts will consider three factors when determining if indirect infringement has occurred:

  1. The act of infringement must be completed by the direct infringer
  2. In completing the infringement, the direct infringer must be influenced by the alleged endure to the point that without influence, the direct infringement would not have taken place. 
  3. The inducer must know that as a result of its influence the direct infringer will engage in the activity that is ultimately found to be infringing.
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If you're running a business, especially a growing one, you might find yourself grappling with an ever-increasing number of legal issues. Whether it's about contracts, intellectual property rights, compliance, or potential lawsuits, having consistent legal advice becomes essential. However, hiring a full-time in-house lawyer may not be cost-effective or practical for many small to medium-sized businesses. This is where a Fractional General Counsel (FGC) can shine. Below are 10 reasons to consider hiring an FGC for your business.

1. Customized Solutions

One of the greatest benefits of a Fractional General Counsel is that they deeply understand your business. We work hard to match you with a lawyer who fits your company culture and budget, and who has relevant expertise. This ensures that you get tailored legal solutions that fit the overarching business objectives of your organization.

“We immediately realized the advantages and efficiencies — quick response times from someone embedded on our team who can channel our culture, vision and strategy in their decision making — at a fraction of the cost.” — Rob Park, Former COO at Helcim

2. Free Up Your Executive Team

Instead of spending hours trying to navigate complex legal landscapes, you can focus on what you do best: running your business. Just see how it helped the CEO of Trufla Technologies get his time back!

3. Cost-Effective

Hiring a full-time in-house lawyer can be expensive. A lawyer with 10 years of experience can easily demand $200,000 per year. A Fractional General Counsel provides you access to an experienced lawyer without the overhead of a full-time salary, benefits, and other associated costs.

4. Expertise On Demand

With Fractional General Counsel, you have access to experienced legal professionals without the friction of having to engage external counsel. Simply send them an email, text, Slack message, carrier pigeon or phone call - and get specialized advice when you need it.

“The openness, availability, and responsiveness that we have with our Fractional Counsel is something we never experienced with our previous legal provider.” — Jodie Allan, General Manager at PowerBill

5. Flexibility

FGC engagements are flexible in order to fit your needs. Scale their services up or down based on your business needs and budget. Best of all, you don't pay for the time you don't use. Unused hours are rolled forward for future use.

We are getting far more value from the Fractional General Counsel model than we have in the past with other legal service providers. The flexibility and accommodation to our business model and needs has been refreshing.” — Ryan Mueller, CEO of Phantom Compliance

6. Risk Management

Risk management is not just about avoiding legal troubles but also seizing opportunities. A Fractional General Counsel can help you take evidence-based strategic risks while giving you the confidence to adapt when the excrement hits the oscillating device. This approach can save you time, money, and hassle in the long run.

7. Managing Specialized Counsel

Complex legal matters require specialized lawyers, leaving some businesses juggling multiple external providers. A Fractional General Counsel can identify, onboard, and supervise legal specialists and ensure they are billing you fairly. The shared language of lawyers makes it easy for an FGC to collaborate and guide external counsel on business objectives and broader context.

“We found that we had to deal with many different firms and lawyers, retelling our story repeatedly. With Goodlawyer, it’s all under one roof… It frees me up and saves us money.” — Mike Bignold, Founder & CEO of CostCertified

8. Stay Updated

Laws and regulations change. A Fractional General Counsel ensures you stay compliant and informed about the latest legal changes that could affect your business. They can also help you predict future changes and skate to where the puck is going.

9. Seamless Integration

A Fractional General Counsel is integrated into your business operations, ensuring smooth collaboration with your team and stakeholders. Many function like any other team member, with a company email and title like General Counsel or VP of Legal. They can be a trusted voice at the boardroom table and represent your interests at the negotiating table.

It’s been a huge load off my busy plate, and I love the peace of mind knowing our Fractional Counsel is guiding my team and me at critical moments.” — Brenda Beckedorf, Former Executive Director at Alberta IoT

10. A Trusted Advisor

Beyond legal advice, a Fractional General Counsel often serves as a sounding board for business decisions, providing a well-rounded perspective that combines both legal and business insights. FGCs typically have 10+ years of expertise relevant to your industry. They understand your sector, competitors, regulators, and other stakeholders who can be key to your growth journey.

Conclusion

A Fractional General Counsel is not just for businesses that can't afford a full-time lawyer. It's for businesses that want to free up their executive team with a responsive, trusted, and cost-effective legal solution. It's about having a tailored legal solution that provides on-demand access to someone who truly understands your business.

Learn more about Fractional Counsel

10 Reasons To Hire A Fractional General Counsel
August 28, 2023

Business growth inevitably brings legal complexities. With your business speeding towards success, you're considering the transition from relying on external counsel to building your in-house legal function. But is hiring a full-time lawyer the right move? Or is there a more flexible, cost-effective solution? Let us introduce you to the concept of Fractional General Counsel (FGC).

FGC is an in-house legal solution tailored to your needs. Fractional General Counsel aren’t full-time employees. Typically they work 15-30 hours per month; but they're there when you need them. They manage your operational legal needs at a volume and monthly price that makes sense for your business. 

These legal professionals are a godsend for scaleups and fast-moving enterprise clients. They serve as your in-house legal team and tackle everything from enterprise contracts, employment and HR to corporate governance. The result is often a freed-up executive team, reduced risk and increased deal velocity.

In-house vs. external legal support

Your business's relationship with your Fractional General Counsel is fundamentally different from an external legal provider (i.e. a traditional law firm). While an external legal provider offers valuable expertise, they often don’t have the same depth of understanding of your business, your risk tolerance, or your objectives. They can also be less responsive than you might like — especially when it comes to your day-to-day operational legal needs like commercial contracts, regulatory compliance and employment matters.

External legal service providers are often unresponsive because they’re focused on major legal milestones like financings and M&A transactions, so they can be slower to respond to operational legal matters. 

"There's a reason that every large enterprise eventually builds an in-house legal team — to ensure their legal work is dealt with quickly, cost-effectively, and in tune with the overarching business objectives of the organization. That last piece, deeply understanding the business, is perhaps the greatest benefit of having an in-house legal function," says Brett Colvin, co-founder and CEO of Goodlawyer.

Fractional General Counsel do much more than just fill a void; they quickly become integral members of your executive team, saving you time and money, and adding a business lens to the legal problems you face on a daily basis. They integrate into your operations by adopting a company email, joining your Slack, or using whatever communication tool works best for your team. They can also design processes to speed up your legal processes. 

Many scaleups rely on Fractional General Counsel to manage the fast-paced operational legal needs and retain their external counsel on certain matters, particularly milestone events like funding rounds or M&As. In such cases, the FGC and external counsel can coexist and even become greater than the sum of their parts. The shared language of lawyers makes it easy for FGCs to collaborate and guide external counsel on business objectives and broader context.

The value proposition of Fractional General Counsel

Patrick Veilleux, a Fractional General Counsel at Goodlawyer, exemplifies the value of an FGC. Following five successful years at Shopify as Director of Legal, and stints on Bay Street and with the federal government, Veilleux missed the thrill of working with fast-growing Canadian scaleups. So in 2023, he joined Goodlawyer’s FGC ranks.

In Patrick’s words, "Being a Fractional Counsel enables me to provide sophisticated scaleup clients with both legal and strategic insights. The opportunity to be at the table during critical planning sessions empowers me to identify risks and opportunities proactively and help my clients chart the best path forward. It's also been incredibly rewarding to leverage my past experiences to help support some of the most exciting technology businesses in the country.”

5 Reasons why your business needs Fractional General Counsel

  1. Tailored Arrangement: FGC allows you to design the scope, cadence and volume of legal support. Engagements are customized to your needs to best address pain points and capitalize on opportunities. Alignment with your company’s culture is imperative, and Goodlawyer allows you to meet and interview candidates to ensure the right fit. 
  2. Specialized Expertise: FGCs typically have 10+ years of legal expertise and specific knowledge relevant to your industry. They understand your sector, your competitors, your regulators, and other stakeholders who can be key to your growth journey. 
  3. Freed-up Executives: CEOs, CFOs, and COOs often find themselves responsible for their organization’s legal function, spending valuable time managing external counsel and deciphering what is (and isn’t) in a contract. A Fractional General Counsel becomes your dedicated internal legal lead, freeing up executives and ensuring more efficient resource allocation.
  4. Agile and Cost-Effective: Full-time in-house counsel brings substantial commitment and costs – salaries, benefits, office space, administrative burden and more. By contrast, FGC engagements offer a stable fee structure and immediate value. 
  5. Scalable: As your business grows, you can easily scale the engagement to match your expanding needs. Increase the monthly hours of your Fractional General Counsel, or add a Fractional In-House Counsel. If you find your needs reduced, engagements can be downsized.

Navigating toward Fractional General Counsel

Want to learn whether Fractional General Counsel might suit your business? Click the button below to set up a conversation with a senior member of the Goodlawyer team. We'll explore your legal requirements, analyze your annual legal budget, and determine if you need industry specialists or senior legal expertise. Our team will also introduce you to vetted candidates tailored to your business. A pilot engagement can allow you to gauge the efficacy of this model for your growing business.

Conclusion

With the dynamism of your scaleup and the legal intricacies that come with growth, it's essential to have legal counsel who understands your business and can respond quickly to your needs. The value lies in your FGC’s ability to provide both legal and strategic insights, like a dedicated in-house team, but at a fraction of the cost. Explore Goodlawyer's Fractional General Counsel services and discover how this innovative legal solution could boost your scaleup's journey.

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 Ready to embark on a thrilling solo adventure as a Canadian lawyer? Buckle up friend, the legal world is about to get a whole lot brighter! Whether you're bidding adieu to a big traditional firm, an in-house gig, or even the government, taking the leap into solo practice requires some serious planning and preparation. But fear not, for we've gathered the top 10 tips from seasoned Goodlawyer’s who have taken over the Canadian legal landscape on their own terms. So, let's dive into what is hopefully a delightful dose of inspiration!

Tip 1: Embrace the Art of Frugality

Who said you need fancy, overpriced resources to thrive? Seek out affordable gems that suit your working style — think budget-friendly practice management and billing software, administrative support (virtual and/or fractional options), and nifty tools to keep your inbox and calendar in check. By keeping your overhead costs low and increasing the efficiency of your practice, you'll have extra funds to sprinkle into growth.

Cheat code: if you’re interested in a one-stop shop for legal operations support, Goodlawyer offers all this and more to its lawyer network!

Tip 2: Let Your Personality Sparkle

Clients aren't just interested in legal services; they want someone they can relate to. So, be your fabulous, authentic self! Show off your approachable side, build those personal connections, and watch your clients swoon. When you're real and relatable, trust and loyalty will come knocking at your door. If the client still isn’t interested, keep calm and lawyer on; chances are high you’ve dodged what would’ve been a misaligned relationship!

Tip 3: Unleash Your Legal Swagger

Picture this: you, standing proud, armed with a unique value proposition in one hand, a clear understanding of the services you offer in the other, and a laser-focused target market as your sword and your shield. It's time to create your own legal destiny! Craft a compelling position statement that sets you apart from the pack and attracts the right clients and the work you love like moths to a legal flame. You're a lawyering superstar, after all!

Tip 4: Befriend the Big Guns

Now, here's a secret sauce to success — forge connections with other lawyers far and wide, whether from your previous legal world or in your new solo practitioner/small firm world!

These relationships can be your golden ticket to referrals and increased visibility in the legal community. Attend events and conferences, and hop into online groups to meet fellow legal eagles in and out of your field. It's like building your very own legal Avengers team!

Easy button: Goodlawyer gives you access to a highly engaged and supportive network of other Goodlawyers ready to help whether you need a second opinion, precedents, legal tech suggestions to level up, or a calming meditative playlist!

Tip 5: Master the Number Crunching Dance

As a solo practitioner, you're the captain of your financial ship. So, it's time to dust off your accounting superhero gear and conquer those financial statements with relish. This is a must for smooth sailing on the ethical and legal seas! Embrace the numbers, avoid ever-present financial whirlpools, and become the guiding star of your own financial destiny.

Tip 6: Love Yourself Enough to Say "No"

Not every potential client is a match made in legal heaven, my friend. Watch for those red flags and gracefully decline clients who might bring more chaos than harmony to your practice. Trust your spidey senses and your past experiences. Remember, your time, effort, and reputation are highly precious gems, so align and re-align these gems with the clients you choose to work with. You deserve the cream of the client crop!

Tip 7: Save Up for the Legal Storms

In the variable world of solo practice, income can be as unpredictable as a tea party with the Mad Hatter. So, it's time to save up for those rainy days. Start with a modest salary and squirrel away three months' worth of savings. Then, gradually increase your pay until you have a comfortable cushion of six months' worth of savings. Rain or shine, you're ready for anything the legal universe sends your way!

Tip 8: Don't Compromise Your Legal Integrity

When the cash flow slows down, the temptation might knock on your door, urging you to take on clients and matters you'd usually pass on. But hold your ground, dear lawyer! Only accept clients and matters that match your values and that you would handle even if money were falling from the sky. Stay true and be authentic to your legal soul, and success will follow suit.

Tip 9: Give Yourself a License to Chill

Building a thriving solo practice that suits your life and practice goals takes time. So, be kind to yourself on this epic journey. Start by working from the comfort of your own space until you're ready to set yourself up in a fancy office; not only are you avoiding the extra overhead and expense, but you might fall in love with a whole new way of working! Embrace the wonders of legal tech to keep your clients happy without the hassle of office visits and to avoid the gargantuan email chains just to schedule a call. Cheers to working smarter, not harder!

Tip 10: Be the Tax Maestro

Ah, taxes — the bane of every lawyer's (and human’s) existence! If you're not drawing a regular salary, maybe you can tango with quarterly taxes in Canada. Put aside one-third of every payment into a separate savings account, dedicated solely to the taxman. With this little trick up your sleeve, you'll breeze through tax season like a pro, avoiding any unwanted legal drama.

And voilà! You now possess the top 10 tips to conquer the Canadian legal world as a solo practitioner. Sprinkle them into your journey, dear legal trailblazer, and watch your practice soar to new heights. Wishing you endless success and all of the professional fun you can have in your marvelous solo adventure!

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Journey of a Solo Practitioner
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Conducting a trademark search is a crucial step in creating an identity for a business to operate in Canada. A trademark search will help you determine if a similar or identical trademark already exists. Setting up your business branding without checking existing trademarks opens you up to the risk of using another trademarked identity which results in wasted time, money, and possible legal complications.

What is a Trademark?

A trademark is a type of intellectual property that provides legal protection for a brand or logo used by a person or business to distinguish their goods or services from others in the marketplace. It is a recognizable sign, symbol, design, word, phrase, or combination of these elements. Trademarks play a crucial role in business by establishing brand recognition, reputation, and consumer trust. They help consumers identify and differentiate between products or services ensuring they are getting what they expect from a particular brand.

Starting your Trademark Search with CIPO

The Canadian Intellectual Property Office (CIPO) online database search will be the most up-to-date source for trademarks in Canada. The CIPO Online Database Search allows you to search the Canadian Trademarks Database, which contains registered and pending trademarks in Canada. Visit the CIPO website and access the Canadian Trademarks Database (https://ised-isde.canada.ca/cipo/trademark-search/srch) to get started.

  1. Start with a broad search: Begin with a general search using keywords or phrases that closely relate to your proposed trademark.
  2. Narrow down the search: Once you have identified similar trademarks, refine your search using more specific terms related to your goods or services. This will provide a clearer picture of any potential conflicts.
  3. Check different categories of marks: Search for similar trademarks in all relevant categories related to your goods or services. More information on the different categories is available here: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/various-categories-marks  
  4. Review variations: Consider searching for variations of your proposed trademark, including misspellings, phonetic equivalents, and plurals. These variations may still be considered confusingly similar.

Common Law Trademark Search

Common law trademarks are those adopted and used without registration, and their owners can claim reputation and goodwill to prevent others from using or registering a similar mark. After conducting your search in the trademarks databases, it is important to conduct a common law search to check if any businesses are using a similar mark without registration. These common law rights are limited to the geographical areas where the mark is being used.

To search for common law trademarks, consider checking local business listings in the areas of intended trademark use. Conducting a search for business name registrations can provide insights into similar marks within your province. Checking for claimed domain names with various extensions (.com, .ca, .org, etc.) can also help assess potential conflicts.

Furthermore, search the web and social media platforms for businesses or goods/services associated with confusingly similar names and marks. This broader search can uncover additional potential obstacles or conflicts.

Conducting a common law search is important to assess potential conflicts beyond registered trademarks and ensure your proposed mark does not infringe on existing rights or create confusion in the marketplace.

Analyzing Trademark Search Results & Next Steps

After conducting your CIPO search and completing a common law search, carefully review the results to identify any potentially conflicting trademarks. Look for marks that are similar in terms of name, appearance, sound, or meaning.

If you encounter potentially conflicting trademarks or are unsure about the search results, it is advisable to consult with a trademark lawyer or agent. They can provide expert guidance and help you make an informed decision about the availability and registrability of your trademark. While conducting your own trademark search is very valuable, it is not a substitute for professional legal advice. A trademark professional can ensure your proposed trademark is adequately protected.

Working with a Trademark Professional for your Search

It is highly recommended to consult a trademark lawyer or registered trademark agent during the process of selecting a business name and trademark. They can conduct thorough searches, assess availability, and provide guidance before you invest in branding efforts. If the desired mark is unavailable, they can assist in finding an available and distinctive alternative. A trademark professional is also well suited to assist with more complicated situations, like when a trademark is intended to be used across multiple jurisdictions.

Engaging a trademark professional early in these situations can help ensure informed decision-making, allow for smoother and more likely-to-succeed trademark applications, and avoid potential conflicts or infringements which can lead to costly delays, loss of goodwill if you have to rebrand, and legal complications.

As a savvy entrepreneur, you know the branding of your business is a critical asset for your future success. Preventing problems is cheaper than correcting them; handle your trademark with the gravitas it deserves!

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How to Complete a Trademark Search in Canada
May 23, 2023