With the world in the midst of the global COVID-19 pandemic, many organizations have transitioned their workforces to remote working. For some employees that may mean working outside of Canada to be closer to family members during the pandemic or to travel abroad for pleasure while continuing to work for the same organization. If an organization is interested in obtaining patent protection for a technology, having employees develop the technology outside of Canada may make the patent process more complex and may increase costs.
Foreign Filing Licenses
One very common patent filing strategy relied on by Canadian organizations is to first file a US provisional patent application to secure a filing date before proceeding to timely file either an international PCT application or regular patent applications in the jurisdictions where patent protection is desired. Depending on where the technology was developed or where an inventor of the technology resided while developing the technology, such filing strategy (or another filing strategy typically relied on by an organization) may not be automatically available.
Several countries place restrictions on where a first patent application for a technology may be filed based on where the inventors of the technology resided or where the technology was developed. Such countries include the United States, China, Russia, India, Spain, Italy, Portugal, Singapore, South Korea, Malaysia and Vietnam. Spain, for example, requires that a first patent application be filed in Spain if an invention is made in Spain. As another example, Vietnam requires that a first patent application be filed in Vietnam if an invention is made by a resident of Vietnam. Such requirements can in many cases be complied with by requesting a "foreign filing license" from the appropriate IP office and an actual first filing in those jurisdictions is not necessary. However, failure to obtain a proper foreign filing license and non-compliance with such requirements may invalidate a patent in at least the jurisdiction(s) whose requirements were not complied with.
To mitigate risk, organizations are encouraged to:
- work with their IP counsel to develop adequate policies which take into consideration the locations where their employees will be working;
- diligently document in which jurisdictions technologies were developed and where the inventors of those technologies resided while developing the technologies; and
- provide instructions well ahead of time to allow for foreign filing licenses to be considered and obtained (if required).
Execution of Documents
At various stages of the patent process it is necessary to execute documents (e.g. assignments, power of attorneys, etc.). Having employees who work outside Canada may make this more difficult.
It is good practice to have executed assignments from the inventors of the technology before a patent application for that technology is filed. With employees working abroad, it may take longer to obtain an executed assignment from them. Time differences may also make it more difficult to coordinate execution of documents.
Some documents need to be executed in person on an organization's behalf. Some documents also need to be executed in the presence of witnesses and/or a notary. Not everyone will be comfortable or readily available to meet in person. A document may also need to be verified by a government authority, consulate, embassy, etc. These offices may not maintain regular hours during the pandemic or be readily accessible from an employee's location.
It is important to allow for additional time to obtain executed documents. Furthermore, organizations should plan to designate at least one person as a signatory who has the authority to execute documents on behalf of the organization and who would be willing and available to meet in person.
Confidentiality of a technology is always a concern and a patent application should ideally be filed prior to the technology being publicly disclosed. In many jurisdictions (e.g. Europe, China, etc.) it is not possible to obtain valid patent protection for a technology that has been publicly disclosed prior to filing a patent application. Some countries like Canada and the United States do provide a one-year grace period (i.e. a patent application can still be filed within one year of a public disclosure), however such grace period cannot be relied on for all jurisdictions.
With employees working abroad it can become more difficult to enforce an organization's confidentiality policies. It may, for example, become unrealistic to enforce a strict organizational policy that all development of a technology must occur within the confines of the organization's labs and that no information can leave the lab. It is important to regularly review and update an organization's policies and agreements to ensure proper measures are in place to maintain the confidentiality of any important technologies. It is also important to educate employees who may have access to confidential information on the importance of keeping that information confidential and of the potential consequences of not doing so.
The pandemic has changed how the world operates and works. Some employees may need to spend extended amounts of time outside of Canada. Others may choose to do so. Organizations should work with their IP counsel to ensure appropriate policies and procedures are in place to ensure that their patent objectives are not adversely impacted by employees who work abroad.
Originally published by Oyen Wiggs, October 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.