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Using online searches to avoid litigation

Do not invest too much time or money on a start-up until you have determined that your product or service does not infringe on someone else’s intellectual property. Simply assuming that you are in the clear and proceeding without proper due diligence (i.e., investigation) could land you in court. Ignorance of an issued patent, registered trademark or copyright is not a complete defence and will only, at best, reduce the damages awarded against you. Fortunately, you can reduce your chances of a dispute by conducting your own free online searches.

Step 1: Use a search engine to search names for your company, services and wares

Before you decide on a name for your company, product or service, search for it online. The search results will raise red flags for you if it is already in use by a competitor, or if it is associated with a non-competing product with which you’d rather not have an association. It is also useful at this stage to search for products or services that are similar to yours. This offers a great way to map out your competitors, and, more importantly, to discover if your invention already exists in the marketplace or was publicly disclosed.

Step 2: Check for registered trademarks

To search the online Canadian trademarks database, go to the homepage of the Canadian Intellectual Property Office (CIPO) and click on “Trade-marks Database” on the left-hand side of the screen. Under “Search Criteria,” enter the information you wish to search.

For example, if you enter “TOYO” under “Search Criteria” and click on “Search” you will receive a certain number results. Each result can then be selected to pull up more information. Simply because results were returned does not necessarily mean you cannot call or even register the name TOYO in relation to your particular ware or service.

To search the online US trademarks database, go to the homepage of the United States Patent and Trademark Office (USPTO). Under the middle column called “Trademarks,” click on “Search Marks.”

To search international marks recorded under the Madrid system that are currently in force in the International Register or have expired within the past six months, use the ROMARIN (Read-Only-Memory of Madrid Active Registry INformation) database.

Step 3: Check for patents

It is very important that you do a patent search prior to starting production or importation. Current, expired and even rejected patents are all relevant to your business. Try using terms and phrases that would probably be found in the claims of your own patent. A lawyer or patent agent can be useful at this stage for searching and construing the claims of prior art.
The following resources are available to assist in your search:

  • The Canadian patents database is available online. Visit CIPO’s homepage and click on “Patents Database” on the left-hand side of the screen.
  • The US patents database is available online. Visit USPTO’s homepage, and under the left-hand column called “Patents,” click on “Search.” For a more detailed search, consider using the Patent Application Information Retrieval (PAIR) database.
  • Google patents is a significant free resource and enables anyone familiar with Google searches to look for US patents.
  • The World Intellectual Property Organization’s PATENTSCOPE database allows you to search close to two million published international patent applications (PCT) and more than 7.5 million documents (including patent documents from Regional and National collections).
  • Operated by the European Patent Office, one of the most comprehensive free databases is Espacenet. It offers access to more than 70 million patent documents worldwide and contains information on inventions and technical developments dating back to 1836. A useful feature of Espacenet is its ability to search in English, French and German.

Step 4:  Check for copyright

Always assume that data compilations, a literary work (which includes software), and dramatic, visual (e.g., photographs, graphics, movies), or musical works are copyrighted. Copyright in Canada is automatically created. To be protected in Canada the work does not need to be marked with a notice of copyright (usually the © symbol). Generally, the copyright exists for the life of the author plus another 50 years following their death.
While it is often very difficult to check the status of copyright some good starting points include:

Note: The content in this article is for purposes of general information only. It is not legal advice.

References

Canadian Intellectual Property Office. (2011, April 27). Retrieved May 3, 2011, from http://www.cipo.ic.gc.ca.

United States Patent and Trademark Office. (2011, April 27). Retrieved May 3, 2011, from http://www.uspto.gov/.

United States Patent and Trademark Office. Patent Application Information Retrieval. Retrieved May 3, 2011, from portal.uspto.gov/external/portal/pair.

World Intellectual Property Organization. (n.d.) PATENTSCOPE. Retrieved May 30, 2011, from http://www.wipo.int/patentscope/search/en/search.jsf.

European Patent Office. (2011, March 24.) Espacenet. Retrieved May 30, 2011, from http://www.epo.org/searching/free/espacenet.html.

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