Welcome and introductions. Try to gauge what level of IP knowledge is in the crowd
There are different ways of protecting your intellectual property. Each has their own strengths and weaknesses. Since the process may be expensive, and it’s often difficult or impossible to start over, you should spend some time making sure you know what you’re getting in to.
It is possible to lose your rights before you even get them. Some types of protection, such as patents, require the information to be kept confidential before filing. In addition, there may be a race against others.
It is often difficult to anticipate what may become important. However, it is important to consider, for example, any variations or modifications that may be made, or any details that may be important. The time to consider these issues is before you file.
Some types of intellectual property are fairly straightforward (e.g. registering a copyright). Others, however, are full of pitfalls and traps for the unwary. Also a warning: a little knowledge can be a dangerous thing. This presentation will give general information, but how you apply it to your specific idea is critical.
The four main types of intellectual property are patents, trademarks, designs and copyright. Each of these are governed by legislation, and have a registration procedure. “Designs” are referred to as industrial designs in Canada, or Design patents in the U.S. Other types of intellectual property include trade secrets, plant breeder’s rights, integrated circuit topography, and domain names. These are either less common, or in the case of trade secrets, do not have a formal registration procedure and are not governed by legislation.
Patents are used to protect inventions – such as machines or processes Industrial designs are used to cover the ornamental features of products. Trademarks are used to protect the names or slogans that products are sold under, but not the products themselves. There is some overlap, as a trademark may be the shape of a package, such as the Coke bottle. Copyright protects the expression of ideas, but not the ideas themselves. Copyright may exist in some trademarks, or in the shape of an industrial design, such as a sculpted product.
Patents are used to protect new processes, machines, arts manufactures or compositions of matter. The basic justification for the patent system is to encourage inventors to share the secrets of their inventions in order to stimulate innovation by increasing the knowledge available to the public. As an incentive, the government offers a 20 year monopoly to exploit that invention.
To obtain a patent, three basic criteria must be met: Is it new? An invention will be new if no on has done a particular invention. An examiner will be looking for a single reference that teaches all the aspects of the invention. The actions of an inventor can also make his or her invention not new by disclosing it to the public. In Canada and most of the world, “public disclosure” means giving sufficient information such that an ordinary skilled worker could build it. This may be in a publication, using or leaving it in public, etc. In the United States, this generally means a publication, selling or offering it for sale, or using it in public in the United States. Some countries, such as Canada and the U.S. give a grace period, but most do not. Is it useful? This is easily overcome, and is mostly a requirement to ensure that the patent application gives sufficient detail to allow someone to use the invention without undue experimentation Is it obvious? An invention will be obvious if a combination of references leads a skilled worker to the invention. In other words, there is no “inventive step”. It has become increasingly difficult to argue against obviousness arguments in recent years. The best position is to show that a certain feature is not taught anywhere, or that the combination gives “surprising results”. Since you cannot add information later, it is important to ensure that all information that may be necessary to respond to any objections is included at the time of filing.
The first step is to decide whether the time is right to proceed with a patent application. While it is not necessary to have a working model before filing, what you consider to be important may evolve as design problems are addressed, or as you get a better understanding of the market. Of course, if you wait to long, you risk “missing the boat”. At the evaluation stage, you may wish to have a prior art search done to see what is out there. The search will give you an idea of what you can protect, and help you to anticipate any problems that may arise during examination. The amount of searching you do will depend on how much risk you are willing to assume, and how much you are investing into the project. If you cannot afford much risk, extensive searching should be done.
During the drafting stage, a description and drawings will be prepared to teach about your invention. This is the “quid”, and must give sufficient detail to allow someone to make and use your invention. The “quo” is the claims, and defines your monopoly. When reviewing a draft patent application, the claims are sometimes “skimmed” because they are difficult to read. However, they should be read very carefully. Every part of the claim has a meaning and defines a feature that, if it is not present, or is present in a different form, falls outside your patent. Read it from the perspective of a competitor – what would you omit or change to get around the claim?
Once the application is drafted, it must be filed in the countries you want protection in. There are some international agreements that give you some time to decide where you want protection. The Paris Convention allows you to file in most foreign countries within one year of the initial filing. A notable exception to this agreement is Kuwait. Another option is a PCT (Patent Cooperation Treaty) application. This does not lead to an international patent, but gives an applicant 30 months from the earliest filing date to decide what countries are of interest. While nearly 140 countries are members of the PCT, some notable exceptions are Taiwan, Chile, Argentina, Kuwait and Iran. After it has been filed, the application will be published after 18 months.
Your protection starts when your application has been filed, and you have “patent pending” status. At that point, you can commercialize, license or sell the technology without any risk of losing your rights. However, you cannot enforce those rights in court until the patent application has been examined and issued. This is a time consuming process. In Canada, examination may be accelerated, but even an expedited process can take about a year to complete. Examination may be a contentious process - examiners are required to review the patent very carefully, and argue any weaknesses, or perceived weaknesses. The next few slides are an example of an issued U.S. patent.
The title page includes information such as the title, inventor, filing and issue date as well as summary information such as the abstract and a representative drawing.
The format of a Canadian patent is slightly different, but includes the same information – drawings, description, and claims at the end of the description.
Claim 1 gives the broadest definition of the invention – each element described in this claim must be present. If the user’s lip is not shocked, there’s no infringement. Dependent claims, include all of the elements of the preceding claims and are therefore more narrow. They act as a “back-up” position. If claim 1 is invalid, then claim 2 may still be valid. However, now you also need an elongate bracket to infringe.
A Trademark can be can consist of simply words such as brand names like “Coke”, or a slogan such as “Always Coca-Cola”. The use of images or words and images can also be considered to be a trademark. The least common type of trademark is on that is based on how the wares or the containers look, or how they are wrapped or packaged. The use of the distinguishing packaging helps differentiate their product from that of their competitors. One example of this is the Coke’s bottle.
The main benefit of a trademark is that it protects the name under which you operate your business or sell your wares. It allows you distinguish your business from others in your industry and prevents them from using a mark that could lead a customer to mistake their product or business for yours. It therefore helps in creating brand recognition. By protecting your brand you increase the value of your trademark, and this may create a very valuable asset for the owner.
Once you have chosen your trademark, you must decide whether you want to register the mark, or just start using the trademark. There are advantages to both options. Registration of a trademark gives the owner the exclusive right to use the mark across Canada for 15 years, and renewable for 15 year periods. Registration of the mark is considered to be evidence of your ownership of the mark. Therefore if a dispute were to arise a person challenging your registered trademark would have the onus of proving that they were the party who was entitled to use the mark. An unregistered trademark has the benefit of costing you nothing, and when starting up this may be of importance. The downside is that multiple businesses in the same industry may start using the same trademark, and this may lead to problems when trying to expand your business. Someone may also come along and register the name after you have started to use it, which might lead to a lengthy and expensive legal dispute over who has the right to use the mark. Another downside of an unregistered trademark is that your protection is limited to where you are doing business and using your mark. For example you may be using you mark in the Grande Prairie region and someone may start to operate under the same name in Saskatchewan.
When choosing a trademark there are several factors that an Examiner will consider, and that will prevent you from successfully registering your trademark. Confusingly Similar An examiner will refuse a mark that they consider to be confusingly similar to one or more marks that were filed prior to your mark. A mark is considered to be confusingly similar, if the Examiner is of the opinion that a customer with imperfect recollection could mistake one mark for another, and therefore the source of the wares or services. This is one of the most common rejections an Examiner may make. To overcome this type of objection you will need to present arguments that distinguish your wares or services from those of the registered mark. Descriptive Descriptiveness is another common reason for refusing a mark. There are two types of refusals based on descriptiveness, either that a mark is considered to be clearly descriptive or deceptively misdescriptive. A mark is considered to be descriptive if it merely describes the character or quality of the wares or services, their place of origin, conditions of, or persons employed in the production of the wares or performance of the services. Does the mark the mark tell a customer what the wares or services are, or describe them or a property which is commonly associated with them? If it does those words need to remain available for other parties engaged in the production of similar goods or the provision of similar services to use them. A mark is considered to be deceptively misdesciptive if a customer were to deceived by the description into purchasing the wares or services which differ in quality or character from those expected. Geographical A mark may be refused for geographical reasons. If the mark being applied for contains a geographical name that is: 1) the place of the applicant’s business, 2) is an area, region or country that has an established reputation as a source of production of the wares or services, or 3) a place widely recognised as a manufacturing, trading or industrial centre and a likely source of a wide variety of products, then the mark will be considered to be descriptive. If the geographical name is an area or region with an established reputation as the source of the wares or services, or if it is a place widely recognised as a manufacturing or industrial centre and a likely source of the goods, and the goods are not from those regions they will be considered to be deceptively misdescriptive. For example the mark “Grande Prairie Motors” for a company producing motors in Grande Prairie would be considered to be descriptive as it describes both the goods and their place of origin. “Loire Wine” would be a mark considered to be deceptively misdesciptive if it was a wine produced in Niagara, as the name inplies the wine is from a region well known for their wines. Mere Surnames An Examiner will also refuse a mark that is considered to only be a name or surname and has no other significance. The question that will be asked will be what would the general Canadian public’s response be to that word? To them is the principal meaning of the word a last name or does it have some other meaning? Section 6(5) of the Trade-marks Act sets out the factors to be considered when determining if a mark is confusing. 6(5)In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be shall have regard to all the surrounding circumstances including The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; The length of the time the trade-marks or trade-names have been in use; The nature of the wares, services or business; The nature of the trade; and The degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
The basic steps to attaining a registered trademark are: Have searches performed Draft and file a trademark application Examination of the application by the Intellectual Property Office Approval of the application and then publication of the application Allowance of the application and registration of the trademark
Test the Waters Searches are recommend especially if a mark has not been used. Doing a search will make you aware of any potentially conflicting marks or any potential problems for your mark before you file. This can allow you to draft your trademark in a manner that will not be considered to be confusing when compare to the wares and services of other of other marks. For example a company that produces snowboards and clothing may decide to leave clothing off their application if they find that there is another company with a similar mark making clothing. They might also try and work out a co-existence agreement prior to filing. By doing this they prevent a potentially expensive dispute from arising between them. Doing a search prior to filing allows a person to determine if there mark is likely to register, and if not to change the mark before starting to prepare their marketing material and sell their goods or advertise their services. A search will also show whether there are any “Official Marks” that may impede registration. An Official mark is a mark that is owned by the government or other public authorities in Canada. These marks are particularly strong marks as they are not limited by wares or services. If the mark is very similar to your proposed trademark, then consent from the proper public authority will be required for you to use your trademark.
2) Filing a Trademark Application Who Will Own The Mark? The mark can be owned by individuals, partners, corporations, societies and public authorities. When filing a decision will need to be made as to who will own it. Will the owner of a company personally own the mark? Will a subsidiary or parent company own the mark? These decisions have different implications. If person or company other then the one using the mark owns the mark then licensing agreements need to be in place, and provisions need to be made to meet the marking requirements
Laudatory term Terms that denote the quality of the wares or services are not registrable, unless coupled with other terms that are registrable. Surnames “ Cole’s” is not registrable, as the Canadian public would view it as merely being a surname. However, it also depends on how common the name is, and the context. For example, “Absolute Bodo” was registrable, even though there are Bodo’s in the phone book. The average Canadian would not automatically view Bodo as being a surname, especially when combined with the word “Absolute”.
Geographic significance To be rejected for “geographic significance”, there must be some relationship between the place, and the wares. For example, a rejection for “geographic significance” for clothing was successfully resolved by demonstrating that the Island of Barbuda is not known for clothing. There would be a different outcome if the name of a well known German city were used for “beer”. Descriptive The trademark cannot merely be descriptive (or “misdescriptive”) of what the wares or services are. For example, Trail Tire was initially rejected as being descriptive of tires for “off road” vehicles. This was overcome by showing that “pathway tires” is not used in the industry to describe “off road” tires. The descriptiveness relates to the phonetics of a mark. A descriptiveness problem cannot be overcome by merely using a unique spelling.
Composite marks Composite marks are trademarks that are a combination of words and design elements. When the words are a dominant feature, the fact it is also a logo may not be enough to save them from problems with the words. For example, “Best Canadian Motor Inns” was rejected as being descriptive. Some lines added to form a logo did not save them. Scandalous marks Scandalous, immoral and obscene trademarks must be judged by the moral standards of the day. “Bubby Trap” was found scandalous for brazieres in the 1940’s, but Californicate was successfully registered in the 1990s.
A mark can be confusing with a trademark that has already been registered, a trademark application that is still pending, or an “Official mark”, which is a mark owned by a government agency.
Whether there is confusion between the marks will depend on the specific situation. Each of these factors must be considered. Note that the resemblance is only one factor. For example, the trademark “Barbie’s” for restaurants is not confusing with Mattel’s “Barbie” trademark for dolls, because the wares and services and the nature of the trade are sufficiently different.
The registration process gives the trademark office as well as the public the opportunity to argue against the application. Once the Examiner is satisfied, the trademark receives a notice of approval, and is published in the trademark journal. Others then have 2 months from the date the trademark is published to oppose the trademark. If a trademark is opposed, the Applicant can either drop the application or go through the opposition process.
Once the opposition period has ended, or any oppositions have been overcome, a Notice of Allowance is issued. If the application is based on the fact that is has already been used since a certain date, the Applicant has 6 months to pay the registration fee. If the application is based on the proposed use of the trademark, the Applicant has either 3 years from filing or 6 months from allowance to file a declaration of use and pay the fee.
In Canada, a registered trademark is good for 15 years. At the end of the 15 years, the trademark can be renewed for an additional 15 years. However, since a trademark owner gains rights simply by using a trademark, registration is optional, although there are benefits to registering: While “common law” trademarks are only protected in the geographic region they are used in, a trademark registration received protection across Canada. Since there are certain presumptions that are associated with registration, it is also easier to enforce. A trademark registration can also form the basis for filing in a different country.
A registration is not “iron-clad”, and there are many ways to lose a registration. For example, if the mark is not used, or is not used as registered, it may be invalid. Some things to watch for at the beginning include using the correct date of first use, and, if the trademark has changed hands, making sure the chain of ownership is known and is complete. Also, within the first 5 years of registration, prior users, such as “common law” trademark owners, may challenge the mark.
A trademark owner is responsible to enforce the rights to maintain the integrity of their trademarks. This includes sending cease and desist letters, as well as filing oppositions for marks that are close. Trademark examiners will sometimes notify owners of marks they may wish to oppose, other trademark owners use a monitoring service to keep them aware of other potentially confusing marks. Another way to lose rights is if the trademark becomes the ordinary word. For example “Kleenex” for tissues, “Velcro” for hook and loop fasteners “Pampers” for diapers all have made efforts to ensure their products are referred to as “Kleenex tissues”.
A trademark is only enforceable in the country it is registered in. While there is a 6 month priority date for a Canadian application, you can file at any time, and can still claim priority from a registration. The risk in waiting is that someone will file for the mark in that country before you. In addition, you also must use the mark in that country.
Example of an industrial design
An industrial design cannot be used to protect the functional aspects of a product. Thus, if the product has a different look, it is a different design. As with patents, a design must be registered to be protected. A product will infringe a design registration if there is no substantial difference between the two.
Once a design has been made public, an owner has 12 months to file for protection in Canada and the United States. Most other foreign countries do not give this grace period. An application should include as many different views of the design to make it clear what the design looks like. The application should also specify what is being protected. Examples: “ The design consists of the features of shape of the arms of the chair as shown in the drawings.” “ The design consists of the features of shape, configuration, pattern and ornamentation of the entire chair as shown in the drawings.”
The Examiner will ensure the rules are satisfied, and may request higher quality drawings or photos. The Examiner also performs a search to see whether a conflicting design has already been filed for. As with patents, Canada has a “first to file” rule. Any subsequent applications are subject to all earlier applications.
If protection is desired in other countries, priority can be claimed within 6months of the filing date. Once registered, an industrial design is valid for 10 years from the registration date, with a maintenance fee due after 5 years. On average, and assuming no major problems, an industrial design takes about 1 – 2 years to register.
While patents protect ideas, copyright protects the expression of an idea. However, it is not used to protect the idea itself. Copyright may exist in literary works, artistic works, dramatic works, or musical works. Note that software code is protected under copyright. This means that no one is able to copy the code, or a substantial portion, without permission. However, it does not prevent someone from writing a similar program. Software may also be protected by a patent, but only as a method and only if the steps meet the patentability criteria
Copyright gives the owner the sole right to produce or reproduce the work or any substantial part in any material form whatever. It does not, however, stop others Copyright arises when an original work is made. “Original” is not a judgment of whether it deserves protection, or whether it is any good, but only whether someone created it without copying. Example – the look and text of the Spring Fresh brochure are protected by copyright. It does not prevent another company from making similar claims, they just can’t copy the way Spring Fresh has done it. “ Space pets” and George Lucas – A “freelance writer” sent in an unsolicited script to Lucas Films, purportedly describing the adventures of warring tribes of furry creatures in a rain forest that had human characteristic. One tribe was named “the Ewoks”. Five years later, Return of the Jedi came out. There was no infringement because, even though the ideas seemed similar, George Lucas could prove that he came up with his script on his own, and that it was “original”. The first owner is generally the creator. For example, if you hire someone to create a website, they may own the copyright to it unless you agree otherwise. Exceptions to this include works made by employees, and portraits or photographs commissioned by someone.
Copyright lasts for 50 years after the end of the year in which the author died (E.g. John Lennon died December 8, 1980, have to wait until January 1, 2031 for the copyright to expire. However, copyright in anything he did in collaboration with any of the other Beatles is still protected until 50 years after they die. Some formal matters: registration is not required, but it acts as proof of ownership if it ever goes to court.
Domain names may be registered by those with a legitimate interest. But in the case of the proud owner of the dog “Joe Brown”, the restaurant “Joe Brown’s” and the political candidate “Joe Brown”, who gets www.joebrown.ca? The answer is, the first to file for it. If a domain name is registered by a cyber squatter, you can apply to have the domain name transferred to you. You must establish that the domain name is confusingly similar to a trademark, trade name, business name, etc. used by you, that the person who registered it does not have a legitimate interest, and that it was registered in bad faith. In other words, they did it to hurt your business or to try and get you to buy it from them. Celebrity domain names: - In the U.S., specific legislation deals with it – is the person using it to make money? - Elsewhere, ask whether the celebrity’s name has become a trademark (e.g. has their name become associated with goods and services?), then apply a similar three-part test
Protecting Your Intellectual Property
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