By Andrew Currier
Most major countries in the world, including the USA and China, require innovators to secure a “foreign filing license” before they can seek patent protection in a foreign country. Canada has no such regime, but perhaps it’s time.
Today the Globe and Mail reported that Canadian universities have been collaborating with Chinese Military scientists, prompting Innovation Minister François-Philippe Champagne to declare such activity unacceptable. The Federal Government has also faced repeated criticism in the Globe and Mail for not doing enough to spur Canadian innovation, despite the fact the Canadian government has numerous programs designed to do just that.
The Canadian patent system presently lacks a subtle but powerful tool that could help. Notably, most major powers in the world require a “Foreign Filing License” before patentable technology can be exported. Simply put, a Foreign Filing License requires innovators to seek authorization to file for patents outside their home country. The process includes a careful review of the innovation for potential military secrets, and sensitive innovations will be denied the right to seek patents outside the country. The USA, China, France, India and many other major powers have strict regimes in place. In the USA, for example, a failure to seek a Foreign Filing License can lead to serious repercussions, including the loss of patent rights and possible fine or imprisonment.
What is more, Foreign Filing Licenses are usually managed by national patent offices and can be applied for separately or inherently as part of a patent application itself. This spurs the filing of patent applications in one’s home country. A Foreign Filing License Regime could have the effect of leading to more patent filings at the Canadian Intellectual Property Office (CIPO), a goal I hear oft-stated in my circles. On the other hand, it is not clear to me that CIPO has the resources to handle a large influx of patent filings from Canadians, since many Canadians seem to prefer to file their applications in the USA first to save cost and focus on their largest market.
Given our close allegiance to the USA, Canada might take the unique step of requiring innovators to first file their patent applications in either Canada or the USA, effectively outsourcing our foreign filing license reviews to the United States Patent and Trademark Office (USPTO). In all seriousness, if our American friends would agree, outsourcing Canadian foreign filing licenses to the USPTO would probably be the fastest approach and would serve to strengthen our close trading and military relationship with our neighbour, without disrupting the steady stream of Canadians who already prefer the USPTO to CIPO.
As a Canadian patent lawyer with a strong US practice, I have been watching the state of Canadian innovation for my entire career. I have much anecdotal evidence that aligns with the concerns raised about the state of Canadian innovation, which is to say we are a fantastic country of innovators, yet we lack boldness when it comes to protecting it and commercializing it, and we might be more careful with our military innovations. The fact that our peer innovators all require Foreign Filing Licenses, and we do not, has always seemed a glaring omission. Perhaps these recent events will lead finally us in that direction.
For more information on Canadian innovation, please contact contact Andrew Currier at firstname.lastname@example.org.
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