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Private investigators integral in intellectual property investigations

|Written By Daryl-Lynn Carlson

Patents and trademarks that are challenged by the Canadian Intellectual Property Office due to the fact that another party claims to have ownership can come to a quick resolution once a private investigator gets involved.

Protecting a patent or trademark can be particularly challenging for small businesses, says David Debenham.

In Canada, there are often discrepancies before the office about who owns a patent or trademark and whether the party that made the initial filing for ownership was indeed the founder or if a former employee stole it and brought it to a competitor.

Lawyers who deal with intellectual property say a thorough investigation by a private investigator can resolve any discrepancy raised by the office.

Justine Whitehead, a partner at Stikeman Elliott LLP’s Ottawa office whose practice is focused on intellectual property law and international trade, says that when a trademark or patent is challenged, it’s best to have a private investigator gather information about the file in the event the matter heads to court. “An investigator is necessary if there is a discrepancy that could end up in the court as they can confirm everything,” she says.

Whitehead notes both patents and trademarks are frequently the subjects of challenges, in some cases by third parties that have launched a similar application. “There can be clients that will face a challenge to their intellectual property rights and in some circumstances they do end up going to court. So in those types of cases, you do have to make sure you have gathered all of the facts.”

In many instances where a trademark or patent is challenged by third parties, Whitehead says she’ll deploy a private investigator to verify whether they have a legitimate argument. “There are many different types of challenges to a patent or trademark that can be cleared up by private investigators,” she says.

“They are very efficient fact gatherers and can help in all types of cases.”

Whitehead adds that there are instances where an investigator isn’t necessarily integral to resolving a challenge if it’s unlikely that the case will end up in court.

There are a number of different scenarios related to an alleged patent or trademark infringement that come to the office’s attention. In some circumstances, a patent or trademark may be subject to challenge in the event a piece of intellectual property is imported into Canada or exported abroad, a situation that would require a lawyer to get involved in order to assert that there  was in fact a registration here. In those types of scenarios, private investigators are integral to confirming the background of the patent or trademark.

In order to enable a private investigator to resolve a dispute quickly, lawyers can assist by conducting thorough research into a client’s patent or trademark to seek out any competing products; look into any employees who have either left the company or have access to the intellectual property; and check for suspected infringements that could be vague but ultimately problematic should a challenge arise.

David Debenham, a partner at McMillan LLP’s Ottawa office whose practice relates to the intellectual property and litigation fields, says protecting a patent or trademark can be particularly challenging for a small business. “The actual registration process is pretty cut and dry, but it’s what can happen afterwards that can be arduous for a small business,” he says. This is due to the fact that small businesses have fewer resources. Once the patent or trademark is registered, any large company in the same industry could pick a fight given the competitor’s limited means.

“That’s where private investigators can be important in conducting an investigation and even surveillance to assist a small business that has registered intellectual property,” Debenham says.

While Debenham says there are no special skill sets required for intellectual property investigations, they can be fairly complex for private investigators due to the background information required should a matter go to court.

As well, there are many cases of intellectual property theft that happen in workplaces of all sizes, a situation that requires private investigators to monitor competitors and their licensees, distributors, and importers.

Deploying investigators in intellectual property matters is becoming more common due to the extraordinary value of a patent or trademark that can serve as a windfall for a company. As a result, many businesses hire investigators to search for infringements of patents and trademarks to protect their respective intellectual property and catch any copycats, says Debenham.

“It can be very cloak and dagger in the area of intellectual property but it’s a field that investigators are becoming more a part of because there is no other way to protect an owner from an infringement.”

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