This article is written by Yash Kapadia. In this article, we explore the various job opportunities available in the field of intellectual property rights law in Canada. We shall further enlist the set of skills needed to land the desired jobs.
Article 2 of the Central Organisation for the protection of Intellectual Property (IP) Laws and the expert organization of the UN, World Intellectual Property Organisation defines IP as follows: “Intellectual Property shall include the rights relating to literary, artistic and scientific works, inventions in all fields of human endeavour, scientific discoveries, industrial designs, trademarks, service marks and commercial names and designations, protection against unfair competition, and all the other rights resulting from intellectual activity in the industrial, scientific, literary or scientific fields.”
Intellectual property (IP) generally includes trademarks, copyrights and patents. All these three are different from each other and require specific knowledge to be well versed with each.
Canada specifically provides statutory protection for trademarks, copyright, patents and industrial designs, and common law protection for trade secrets and against passing off. Canada Intellectual Property Office (CIPO) is the official body responsible for the administration and processing of IP i.e. patent, trademark, and copyright in Canada. CIPO is responsible for processing applications to register patents, trademarks, copyrights, and industrial designs.1 CIPO’s mandate is to provide this service and, more generally, to provide education on intellectual property to Canadians.2
For anything that is related to IP, it is important that a person equipped with specific knowledge and skills in this domain is consulted like a lawyer or an expert consultant. This may include registering a trademark before starting a business or even registering a patent after years of research.
Through this article, we shall explore the opportunities for IP law enthusiasts in Canada and the set of skills that are required in order to bag these opportunities.
Disclaimer: The data and content for this article have been taken from a ton of opportunities (posted on LinkedIn, Indeed, etc.) in Canada for different kinds of IP law work and their requirements.
Various areas in the IPR field
The following are the areas in the IPR field wherein professional expertise is needed:
Pursuant to the formulation of Canada’s Trade Marks Act, 1985, a holder of any registered trademark has the right to take action against any person who is using the same or confusingly similar trademark. A registered trademark holder is not required to establish goodwill or a reputation as a prerequisite for enforcement. In fact, there have been significant changes brought in the Trademark System in 2019 which one can read about, here. The changes include the process being at par with international trademark standards, change in the registration process, filing fees and mainly “use or intent to use” is no more required whilst registering a trademark.
Pursuant to the formulation of the Patent Act, 1985, an inventor may obtain a patent for any new, useful and non-obvious art, process, machine, manufacture or composition of matter or any new, useful and non-obvious improvement thereof. The Canadian Intellectual Property Office (CIPO) issues patents that are valid (presumptively) for 20 years from the date of filing with no ability to renew or extend (historically). In fact, the Patent Act enforced certain Amendments in September 2017 allowing pharmaceutical patent owners to obtain, in certain circumstances, a Certificate of Supplementary Protection for extended protection of up to two years.
The Copyright Act, 1985 is in force to prevent unauthorized copying, performance or publications of original artistic, dramatic, musical and literary creations. In Canada, registration of copyright is not a precondition for enforcement but provides the registration holder with the presumption of ownership and subsistence of copyright in any future enforcement proceedings.
- Industrial Design
This is governed by the Industrial Designs Act, 1985 that relates to registering original visual features of patterns, shapes, configurations and ornaments.
- Trade Secrets
There is currently no legislation with respect to trade secrets in Canada. However, the rights, interests and obligations of interested parties are protected within the four corners of contract law by means of confidential agreements, non-disclosure agreements, etc.
A detailed informative article about the various areas can be accessed here.
Job opportunities and positions
There are numerous job opportunities available for every IP law enthusiast. The only thing that remains is to ascertain which position is one well prepared for and passionate to practice. These job opportunities can be part-time, full-time, remote, hybrid depending on the location and at the discretion and working policies of every employer/ company/ organisation. The following are some of the job opportunities in the field of IP law in Canada.
- Patent Assistant/ Patent Agent/ Patent filing Clerk:
Being a patent specialist is one of the highest-paying jobs in Canada. There are various job availabilities3 depending on the skillset one has and for the aforementioned niche positions under Patent law, the following are the job profiles:
- Preparing, filing and reporting patent applications in Canada, USA and WIPO.
- Preparing applications to file electronically with CIPO and USPTO and PCT applications.
- Drafting, proofreading and prosecuting patent applications, amendments, and other documents.
- Preparing and filing formal documents such as Assignments, Declarations.
- Formulate IP strategies and maintain close relations with clients to update the IP strategies in line with their business needs.
- Execution of invention mining, patentability searching, landscaping.
- Preparing and managing the freedom-to-operate analysis as well as non-infringement and/or invalidity opinions.
- Preparing cost estimates and items required for filing and reporting to clients.
For example, for the position of Patent Counsel at Huawei Technologies Canada Co. Ltd,4 the following are the job requirements:
- “Registered USPTO/CIPO Patent Agent (member in good standing with applicable provincial/territorial Law Society will be considered an asset).
- Four or more years experience of preparing and prosecuting U.S., Canadian and/or international patent applications preferably in the telecommunications, semiconductor, and computer fields.
- Strong technical background with a B.S. and/or advanced degree in Electrical Engineering, Computer Engineering, Computer Science or relevant field.
- Strong written and oral communications skills.
- Proactive, result-oriented, and strong motivation to excel.”
A successful candidate can then work closely with Research and Development engineers in Huawei’s invention disclosure review process to identify valuable inventions for patent applications in the telecom technical area, analyse pending patent applications (across various jurisdictions like Canada, US, EU) and analyse global strategies. As per Glassdoor, a role like this offers a pay of around $140,000.
One can also use the aforementioned skills and use them independently as a freelancer by working for individual clients one can get from sites like Upwork, PeoplePerHour, Fiverr or by working at law firms or companies too.
- Copyright or Trademark Agent/ Clerk/ Paralegal/ Legal Assistant/ Counsel
One can practice in the field of copyright or trademark with the help of certain online courses and further certifications. In Canada, there are many post-graduate diplomas to become a certified law clerk and paralegal. These courses act as one of the many gateways to being well equipped to apply for roles like a trademark agent or a trainee or a clerk or a paralegal. Following certain years of practice and relevant experience, one can also become an IP Counsel for a huge organisation like Amazon or Google considering the number of legal tussles they have under the IPR infringement domain. The following is a list of curated work that needs to be done if one is applying for the aforementioned roles5:
- Preparing and filing Canadian trademark applications with all relevant follow-through correspondence.
- Reporting routine correspondences, including approval notices, advertisements and Registration Fee Notices to one’s senior.
- Knowing the process of how to pay fees to CIPO, including registration and renewal fees.
- Managing, organising, prioritising and completing the given administrative tasks, including reminders, billing and status tasks (for the role of an IP Legal Assistant).
- Monitoring various dockets and deadlines for the action of every case assigned(for the role of an IP Law Clerk).
- Reporting case updates and preparing and filing responses to office actions, including revising the application and all relevant follow through correspondence.
For example, a job opportunity for the position of Senior IP Counsel at Sophos (a software company) requires the following qualification6:
- “Strong academic credentials including a J.D. degree and membership in one state bar of Canada.
- Relevant experience in a well-regarded law firm and/or in-house legal department. Preferably in-house legal experience with a global high-tech company preferred.
- 7-10 years drafting and prosecuting applications.
- Self-starter with the ability to execute tasks efficiently with sound business judgement and attention to detail.
- Excellent legal and business judgement.”
A successful candidate, as an IP Counsel, will be developing and maintaining the Company’s IP and processes, including patents, trade secrets, trademarks, copyrights, licensing and research agreements, be part of IP Review Committee, IP filing, reviews, prosecutions, etc. The estimated pay structure for this role is between $75,000-$100,000.
- Freelance legal writer
The role of a writer across various fields has become more important than ever during and post the COVID-19 pandemic. The ability of a person to write on certain specific knowledgeable topics displays a plethora of skills. This especially does not require any major qualifications.
For example, on Upwork, Fiverr and Indeed, there are abundant opportunities for IP professionals to write articles, blogs, research papers and various small gigs. These roles are remote, part-time and therefore this can also be taken up as a side hustle where the writer can keep building his knowledge in his area of interest and also earn money while doing so.
- Start-up Consultancy
Legal Consultants can be a side hustle as well as a full-time commitment wherein one can advise growing startups in Canada, the USA and other countries on the various IP-related pre-requisites they need to comply with before starting their businesses.
Independent one-time or weekly consultancies can also be provided through various platforms as discussed above like Upwork, Fiverr, PeoplePerHour.
Skills required to land these jobs
The following are skills as per which area one wants to practice in:
- As a trademark professional
- Identify the list or bundle of IP rights that can be included in the branding and can be protected under both trademark and copyright legislation;
- Ability to conduct the required research to evaluate and assess whether the mark is available to use and register in Canada or not;
- Ability and knowledge on how to submit a strong initial application that can avoid unnecessary costs and delays; and
- Experience to help, develop and strategize the usage of the mark to maximize the brand value and further make sure that the benefits of registering a trademark are actually realized.
- As a patent professional
- Ability to conduct in-depth research in order to ascertain whether a client’s invention is patentable;
- To further evaluate the scope of the patent’s protection that may be obtained for the client’s invention, in Canada and other places recommended;
- Ability to perfectly, in detail, describe and explain the client’s invention for the claim so that when the patent application is filed, the chances of it being refused during examination by the Patent Branch is drastically reduced;
- Skills to develop various strategies in order to increase the value generated by the client’s invention; and
- Knowledge and experience that minimise mistakes that may cost the client later on so that the client can focus to develop their invention in an undistracted environment.
- As a copyright professional
- The primary aim must be to build a high wall to protect the interests of one’s client.
- Well-rounded knowledge and experience in copyright clearance, prosecution and enforcement.
- Preparing and filing copyright registration applications in Canada.
- Arranging and supervising the filing of copyright registration applications in the United States and other foreign jurisdictions.
- Drafting and responding to cease and desist notices and further ability to close litigation favourable to the client.
The field of Intellectual Property Rights is only going to go up in terms of work, market size and opportunities. There is no reference needed here as it is public knowledge when we hear about the multi-billion dollar lawsuits filed by companies including Google, Facebook (now Meta). A legal professional deciding to focus in this field is definitely taking the right track when considered in terms of scope, growth and of course the monetary benefits.
It is imperative to state here that one must be aware and must have knowledge about the IPR market, the job opportunities available across various countries and how to learn the skills and put them to use. Law students and professionals can take up various courses or even attend bootcamps like this from Lawsikho which require less time commitment but are willing to go through a brainstorming session of knowledge.
- Annual Report 2017–2018Helping make Canada a global centre of innovation – Canadian Intellectual Property Office
- CIPO mandate – Canadian Intellectual Property Office
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