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The benefits of filing a patent in Montréal

April 25, 2019

Companies looking to patent their inventions can already benefit from patenting in Canada. Even more advantages for businesses are expected to be available once upcoming legislative changes will come into force after ratification of the Canada-United States-Mexico Agreement (CUSMA). David Turgeon, PhD, partner, lawyer and patent agent at Fasken, discusses the impact of these changes, and explains why it is in businesses’ best interests to deal with a Montréal law firm.  

Moving towards more balanced requirements for obtaining and enforcing patents

Canada launched a review of its patent legislation after the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) came into effect. “We can expect a better balance between the interests of patentees and the public,” explains David Turgeon. “In addition, the Supreme Court of Canada has clarified some issues regarding patent validity, which had an impact notably on pharmaceutical companies. These changes will certainly be viewed positively by innovative companies, which will in turn certainly encourage more investments in Canada.”

While the CUSMA has yet to be ratified, the agreement does not provide for any major changes in the patent regime, other than an extension of the patent term in specific circumstances.

Once these legislative changes are fully implemented, Canadian patent law and procedures will be more in line with those established in Europe, the United States and other parts of the world. These changes will undoubtedly incite more companies in choosing to invest in Canada, who previously questioned the extent to which the Canadian patent system could effectively protect their commercial interests.

The benefits of a Canadian patent in litigation cases

According to David Turgeon, there are several benefits to filing patents in more than one market. “For companies doing business in North America, it’s not uncommon for products to be manufactured or sold both in Canada and the United States,” he explains. “In this context, the Canadian patent becomes a valuable tool to effectively block a key additional market. In some cases, the Canadian patent may also interrupt the production of key components manufactured in Canada and intended to be incorporated into a U.S. product. This allows holder companies to assert their patents in both jurisdictions simultaneously, or to choose the one that is most advantageous from a strategic point of view.”

Three reasons to choose a Montréal law firm 

For foreign companies, and especially for European companies from French-speaking markets, Montréal is a gateway of choice to the North American market. The region offers several benefits, including:

  1. The ability to work in English and French, as well as the region’s proficiency with the Civil Code and the common law (legal systems deriving respectively from French and British systems);
  2. A favourable exchange rate compared to the U.S. dollar and the Euro, as these typically trade at a higher rate than the Canadian dollar;
  3. The more advantageous hourly rate charged by Montréal law firms compared to those of U.S. firms.

The costs involved in filing and maintaining multiple patents in different markets are significant. “For companies generating between $100 million and $500 million in sales, whether from the manufacturing, biotechnology or artificial intelligence sectors, it’s not uncommon to hold a number of patent families which comprises between 25 and 100 patents, and which necessarily requires significant management costs,” David Turgeon explains. “To reduce these costs, it may be beneficial for companies to outsource the management of their North American patent portfolios to a Montréal firm.”

From an investor’s point of view, the signing of various free-trade agreements with Canada’s major trading partners, and the harmonization of intellectual property legislation resulting from these agreements, is definitely a benefit. In addition, Montréal is certainly an excellent platform for foreign companies looking to develop in the North American market.

To learn more:

What is a patent?
How to apply for a patent in Montréal
Patent tutorials