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Overview of Intellectual Property
 

Overview of Intellectual Property

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Overview of the law of patents, trade-marks, copyright and other types of intellectual property law

Overview of the law of patents, trade-marks, copyright and other types of intellectual property law

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  • Your intellectual property (IP) is one of your most valuable business assets . When used strategically in your business, it can increase your competitiveness and allow you to reap numerous benefits . Proper intellectual property information helps you avoid possible infringement problems. This type of information is obtained by conducting an intellectual property search and obtaining proper infringement advice from IP specialists. Doing it early is crucial so as to avoid unnecessary conflicts with other enterprises and loss of resources. Speaker note: These are the three key messages to be conveyed to the audience throughout this presentation.
  • Your intellectual property (IP) is one of your most valuable business assets . When used strategically in your business, it can increase your competitiveness and allow you to reap numerous benefits . Proper intellectual property information helps you avoid possible infringement problems. This type of information is obtained by conducting an intellectual property search and obtaining proper infringement advice from IP specialists. Doing it early is crucial so as to avoid unnecessary conflicts with other enterprises and loss of resources. Speaker note: These are the three key messages to be conveyed to the audience throughout this presentation.
  • Granting of a patent is not automatic . The basic principle governing patents is to promote business in a country by providing an incentive to invest in R&D . T he Patent Act provides a means for obtaining exclusive rights on an invention in exchange for a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. The patent document provides a wealth of information: a capsule description of a particular technology; background history of a problem; how the new invention overcomes these problems; and a description for making the invention.
  • A patentable invention can be a product (a door lock), a composition (a chemical composition used in lubricants for door locks), an apparatus (a machine for making door locks), a process (a method for making door locks), or an improvement on any of these. At least 90 percent of patents are, in fact, for improvements to existing patented inventions . Non - patentable subject matter includes , for example , pure mathematical equations or methods of medical treatment on the human body (although some medical tools may be patented ).
  • Once we know that we are in patentable subject matter, we may verify if our invention is patentable according to the three main patentability criteria: Novelty: An invention is not new if it was already known to the public. Novelty is global, i.e., someone cannot patent the 3D puzzle structure in Canada if, for example, it is already sold in Asia by someone else. Usefulness: An invention is useful if it has industrial or commercial value in a manner that benefits the public. Inoperable machines, for example perpetual motion machines, are not useful. Unobviousness is also often called ingenuity: it requires that the invention meets a minimum threshold of innovation. We could probably not patent four 2D puzzles glued on cardboard backings and attached at their edges to form the four walls of a rectangular self-standing puzzle structure, since it would probably be considered obvious to obtain such a structure from known 2D puzzle technology.
  • Search : (a) initial search by applicant, and (b) preliminary patentability search by patent agent. Purpose: to determine likelihood that an eventual application for patenting the invention would be allowable. The novelty patentability criterium requires no public disclosure of the invention prior to filing the application, even by the applicant himself . A public disclosure can be something as simple as showing the invention to clients visiting your company, or moving the invention about without hiding it. There exists a one year grace period in Canada and in the United States to validly file an application after a first public disclosure of the invention by the applicant. In other countries, this grace period does not exist. To obtain a patent in Canada , a patent application must be filed before CIPO. The patent application can be compared to a contract to be negotiated: the applicant asks for a certain scope of protection, and CIPO ensures that the patentability criteria are met and issue s a patent that is fair to the applicant and fair to the public who must not be hindered from doing what it is already allowed to do .
  • Through a patent, the patent owner acquires the right to exclude others from making, using or selling the invention from the day the patent is granted to a maximum of 20 years after what is considered to be the filing date of the patent application in Canada . The rights conferred by a Canadian patent extend throughout Canada, but not to foreign countries. You must obtain a patent in other countries to have exclusive rights in those countries . Conversely, foreign patents do not protect an invention in Canada . Once a patent has expired , anyone may freely make, use or sell the invention. Patent markings: it may be recommendable to mark “ patent pending ” while the application is pending, to profit from dissuasion. No application number should be indicated. It is not compulsory to mark the patent once it becomes granted in Canada, although it may be advantageous for dissuasive purposes . In some countries, marking provides more concrete advantages such as in the United States where no damages can be recovered by the patentee if the patented product was not marked, before the infringer was notified of potential infringement . This may also explain why we often see “ U.S. Patent No. ” Note: Policing is the responsibility and decision of the owner.
  • A trade-mark is a word , design or combination of word and design. ( Speaker note: W hen going over the trade-mark examples on this slide, feel free to provide other examples of trade-marks in the specific field of the audience . ) The shaping of the goods or their containers , or the mode of packaging goods may be registrable. It is called a distinguishing guise . For example: the butterfly shape of candies moulded to look like butterflies. There are also other ( what are termed ) “non-traditional” marks which may or may not be registered in Canada. Three-dimensional marks, sounds, smells are all registrable in various jurisdictions.
  • A trade-mark is a word , design or combination of word and design. ( Speaker note: W hen going over the trade-mark examples on this slide, feel free to provide other examples of trade-marks in the specific field of the audience . ) The shaping of the goods or their containers , or the mode of packaging goods may be registrable. It is called a distinguishing guise . For example: the butterfly shape of candies moulded to look like butterflies. There are also other ( what are termed ) “non-traditional” marks which may or may not be registered in Canada. Three-dimensional marks, sounds, smells are all registrable in various jurisdictions.
  • A trade-mark is protected in two ways : First, it is protected under common law. If you use your trade-mark, you obtain a limited protection on this mark. This type of protection occurs automatically when you start using your trade-mark on the market. Rights in the trade-mark reside with the owner of the mark . Those rights in Canada extend to the geographical boundaries of the exposure of the mark insofar as the mark has a recognized reputation in the corresponding trade. Usually, the better protection on a trade-mark is obtained through registration of the trade-mark before the different national offices, such as CIPO in Canada. Registration of a trade-mark aims to provide exclusive rights on this mark, as detailed hereinafter.
  • There are limitations to what can be registered as a trade-mark in Canada. For example, marks that represent the name of the goods or services in any language are not registrable. For example, “SHOE” for shoes, or “GELATO” for ice cream. This ensures that everyone in a particular field will not be prevented from using the proper expressions to name their goods or services. Marks that are clearly descriptive of the character or quality of the goods or services in association with which they are used or proposed to be used, are not permitted registration. For example, “JUICY” for apples or “LIGHT” for beverages . If the mark or a portion of the mark is deceptively misdescriptive of the goods or services in association with which it is used or proposed to be used, the mark as a whole is considered unregistrable.
  • Words that designate a place of origin or that mislead the public into thinking that the goods and services come from a place that they do not, are not registrable . Words that are primarily a name or a surname cannot be registered. A mark which is similar to another entit y’ s mark and that is used in the same scope of business, is considered to be confusing . Confusing marks are not permitted registration. The risk of confusion takes into consideration visual , phonetic , semantic resemblance , the type of goods or services and the channels of trade . Trade-marks are used to differentiate one person’s goods from those of another , and are an indication of source. When consumers believe that the goods or services of similar marks come from the same source, there is risk of confusion. For example: King Dog Food and King Cat Food. In the case of two confusing trade-marks, the trade-mark owner who has prior rights will be allowed to use and register his mark. Note: A mark which includes a portion that is non-registrable and a portion that is registrable, may be registrable as a whole.
  • The first thing to do is to search to verify if the mark is available for use and registration. This is not compulsory, but it is recommended. You can conduct an initial search on some on-line databases such as CIPO’s Trade-marks Database. This is a good screening process , but it should not be used to “clear” your mark. More sophisticated searches such as the searches carried out by trade-mark experts that cover both trade-mark registrations and common law trade-marks, will provide a better evaluation of the availability of your mark. After the preliminary search, the trade-mark registration process itself begins. The trade-mark registration process commences with the filing of an application to register the mark before the national offices such as CIPO in Canada. Applications may be filed based on “use” or “intention to use” the mark in Canada. This ensures that rights in a trade-mark commence from the filing date or the named date of first use. The date of first use or the filing date determine entitlement to trade-mark rights . The trade-mark application will be examined by the Trade-marks Office examiner for registrability and if approved will be published in the Trade-marks Journal for opposition . Following the opposition period, the mark will be allowed , and subject to payment of a registration fee and potentially other formalities , it will be registered . A registration may continue provided it is renewed every 15 years.
  • Some marks have a greater intrinsic distinctive character than others. Usually, marks can be positioned somewhere along a spectrum of distinctiveness. For example, AMERICAN AIRLINES is very descriptive and might not have been registrable at the outset. On the other hand, PEPSI is very distinctive. Also, there are exceptions to marks which could be considered non-registrable because they are composed of a person’s name, they are descriptive of the goods or services or of their place of origin. When it can be proven that a name has acquired distinctiveness and has become recognized as a trade-mark, then that mark may still be registered . For example: Tim Hortons.
  • Copyright protects the expression of an idea or intellectual creation ; it does not protect the idea itself . For example, if someone writes a recipe for a cake, they have the exclusive right to publish and copy the recipe. But anyone can use the recipe to bake a cake. Similarly, if someone writes a computer program, they have the exclusive right to that program, but not to the underlying functions or mathematical calculations. Copyright is not limited to things we normally think of as “creative” works , i.e., novels, movies and music . The actual categories of works that are protected by copyright are very broad. Examples of works that are protected by copyright: b usiness plans, advertising and marketing materials c omputer programs a udio-visual works t raining manuals b lueprints and mechanical drawings artistic element of l ogos and graphical designs
  • The copyright owner has the exclusive right to produce or reproduce the work. Copying without permission is infringement – i.e., photocopying is infringement . The most important is the right to reproduce all or a substantial part of the work . The owner has the right to publish the work or not to publish it. The owner also has the right to modify the work ; to translate it into other languages ; to combine it with other works . The owner may also authorize others to do any of these things. Normally, this is done through a form of license agreement . It is also important to note that the owner can split up all of these rights and grant rights for a specific territory or period of time. For example, the author of a computer program can license one person to publish and sell the program in North America and license someone else to produce French and German versions in Europe. Note: Policing is the responsibility and decision of the owner.
  • In Canada, the term of copyright is generally the life of the author, plus 50 years . Note that this doesn’t change, even if ownership of copyright is transferred. In other countries, the copyright term may be different. For example, in the United States the term was recently extended to life of the author plus 70 years. Common e xceptions : For joint works , the term is measured from the death of the last surviving author. For anonymous works , the term is 50 years from the year of publication. If a work is published after the author’s death , the term runs for 50 years from the year of publication. For movies (cinematographs), the term runs for 50 years from the year of first publication. Photographs are more complicated . If the owner is the photographer , the term of copyright is the life of the photographer, plus 50 years. If the owner is a corporation , the term is 50 years from the year the photograph was made.
  • A copyright registration is prima facie proof of ownership . It can be presented in court , to prove ownership. The opposing party can still challenge ownership, but the onus is on the challenger to prove that the registered owner of the copyright is not the legal owner , f or example, that the work was created by or assigned to someone else. Registration can also help win an award of damages . The Copyright Act provides for a defence of “innocent infringement . ” If the defendant can show that they were not aware that there was copyright in the work, the owner is entitled to an injunction to prevent future infringement, but no damages. This defence is not available, if the copyright is registered .
  • These rights are personal to the author . They are separate from copyright . Moral rights include: t he right to be identified as the author, either by name or under a pseudonym ; t he right to be anonymous ; and t he right to the integrity of the work . . The right to integrity includes the right to prevent any use of the work or any change to the work which would prejudice the honour or reputation of the creator . The most famous example in Canada is the case of the hanging sculpture of a flock of Canada geese at the Toronto Eaton Center . The artist objected to the mall owners hanging Christmas ribbons around the birds’ necks and was successful in obtaining an injunction to remove them. Moral rights cannot be assigned and are not transferred when the copyright is assigned .
  • Different from patent which protects the functional elements.
  • Generally, industrial design protects the original visual or aesthetic features of a product. Concerning electronic icons: these can be computer icons appearing on computer screens, but also car speedometer icons and cell phone icons. Applications relating to icons, must be directed to the article in which the icon is embodied. For example: the computer screen or speedometer.
  • These rights are personal to the author . They are separate from copyright . Moral rights include: t he right to be identified as the author, either by name or under a pseudonym ; t he right to be anonymous ; and t he right to the integrity of the work . . The right to integrity includes the right to prevent any use of the work or any change to the work which would prejudice the honour or reputation of the creator . The most famous example in Canada is the case of the hanging sculpture of a flock of Canada geese at the Toronto Eaton Center . The artist objected to the mall owners hanging Christmas ribbons around the birds’ necks and was successful in obtaining an injunction to remove them. Moral rights cannot be assigned and are not transferred when the copyright is assigned .
  • Any secret that has some value and is used in business, industry or trade. Trade secrets often go hand-in-hand with other forms of intellectual property as part of an overall IP strategy . Most intellectual property starts as a trade secret – an intellectual creation in somebody’s mind that may have competitive value.
  • The essential element of trade secret protection is that it remains secret . This can be done through physical and organizational procedures , such as access controls , locking confidential documents in a safe or safety deposit box, computer security systems , legal agreements . Handle confidential information on a “need to know” basis. Confidentiality or n on-disclosure a greements should be used when disclosing information to current or prospective customers, suppliers or business partners . Licen c e a greements generally include confidentiality clauses , as well. Certain individuals, such as employees, agents, company directors and officers have a legal duty of confidence . But it is usually a good idea to reinforce that general legal duty with written agreements and company policies. The legal document will at least remind the individual of their legal responsibilities.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.
  • Generally, protection is lost if the trade secret is disclosed – or if it is independently developed by someone else. If the secret is improperly disclosed – for example, by an employee or in breach of a confidentiality agreement – the usual remedy is money damages from the person disclosing the information. This is often not a useful remedy . Either the person cannot pay, or the amount of provable damages is far less than the value of the secret. Take a recent example from a Canadian case. The former licensee of a beverage manufacturer misappropriated the formula for the beverage when the license was terminated. The court awarded the owner damages for loss of sales, but only for a short period of time, because there was evidence that the formula could have been reproduced very easily by an experienced food chemist. The licensee merely got a head start by taking the secret. In some cases, courts will issue an injunction to prevent someone from using information that they knew or ought to have known was a trade secret. But those cases are very rare. And they don’t help, if the information has become public.

Overview of Intellectual Property Overview of Intellectual Property Presentation Transcript

  • Overview of Intellectual Property Mala Joshi Paul Lomic May 4, 2009 Ontario Bar Association
  • Types of IP covered in this presentation
    • Patents
    • Trade-marks
    • Copyright
    • Industrial Design
    • Trade secrets
    • Domain Names
  • Other Types of IP
    • Integrated circuit topographies
    • Plant b reeders’ r ights
  • Patents
  • The owner provides a full public disclosure of the invention. The Canadian government provides a grant of exclusive rights in Canada to the owner. The “oft cited” patent bargain
  • What is patentable?
    • Products
    • Compositions
    • Machines
    • Proceses
    • Improvements to any of the above
  • What is NOT patentable (in Canada)?
    • Abstract ideas
    • Scientific principles
    • Computer programs
    • Etc.
  • Patentability criteria
    • An invention is patentable if it is:
      • Novel;
      • Useful; and
      • Unobvious
  • Key steps to obtaining a patent
    • Searching for related prior art
    • Ensuring there is no public disclosure of the invention
    • Drafting the patent application
    • Filing the patent application
    • Examination of the patent application
    • Issuance of the Patent
  • Patent protection Section 42 of the Patent Act grants patentees the: “ exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used”
  • Trade-marks
  • Examples of Trade-marks
    • Word(s)
    • Word & Design
    • Design
    • Slogan
    • Shape
    • Phone Number
  • Three types of Trade-marks
    • Ordinary Marks
    • Certification marks
    • Distinguishing Guises
  • Trade-mark protection
    • Common law
    • Trade-mark registration
  • Unregistrable marks
    • Name of goods or services in any language , e.g., spanakopita (Greek for spinach pie)
    • Clearly descriptive of the goods or services, in English or French: juicy for apples
    • Deceptively misdescriptive of the goods or services: sugar sweet for candy sweetened with artificial sweetener
  • Unregistrable marks (cont.)
    • Geographical origin of the goods or services , e.g., Atlantic Cod
    • Name/ s urname: Jane Smith or Smith
    • Confusing with another registered trade-mark
  • Trade-mark registration process
    • Search
    • Application to register
  • Distinctive character
    • Distinctive mark v. descriptive mark
    • Acquired distinctiveness
  • Copyright
  • What is copyright?
    • It is the exclusive right to produce or reproduce an original work :
      • L iterary works
      • D ramatic works
      • M usical works
      • A rtistic works
      • Cinematographic works
  • Rights of copyright owner
    • The copyright owner has the exclusive right to:
      • C opy
      • P ublish
      • M odify
      • T ranslate
      • Authorize others to do those things
  • Term of copyright
    • Life of author plus 50 years
    • Common exceptions:
      • - joint authorship
      • - anonymous works
      • - posthumous publication
      • - movies
      • - photographs
  • Benefits of registration
    • Use the copyright certificate in court to establish ownership
    • Burden of proof shifts to the challenger
    • Increased damages for infringement
  • Moral Rights
    • Right to be named as author or to remain anonymous
    • Right to integrity of the work
    • Author can prevent uses or changes that would damage honour or reputation
    • Moral rights cannot be assigned
    • They can be waived in whole or in part
  • Industrial Designs
  • What is an industrial design? The visual features of shape, configuration, pattern or ornament or any combination of those features applied to a manufactured article made by hand, tool or machine.
  • What is protected?
    • Original aesthetic features of a product
    • Examples:
      • - o rnamentation on clothing or footwear
      • - s hape s of bottles or other containers
      • - shape of the body of a vehicle
      • - e lectronic icons
  • What is NOT protected by industrial design?
    • Manufacturing process
    • Functional features
    • Principle of construction
    • Materials used in the construction of the article
    • Colour
    • Ideas or general concepts
    • Internal components of the article, not seen in the assembled article
  • Trade S ecrets
    • • Specific p roduct i nformation
      • - f ormula
      • - p attern
      • - d evice
      • - c ompound
      • - p rocess
    • • Business i nformation
      • - c ustomer l ists
      • - s upplier l ists
      • - p ricing
      • - b usiness p lans
    Any confidential information used in a business that gives a competitive advantage , and that can be kept a secret. What is a “trade secret”?
    • Confidentiality agreement
    • Licen c e agreement
    • Legal duty of confidence
      • - e mployees
      • - a gents
      • - o fficers and directors
    How is a trade secret protected?
  • Domain Names
  • Domain name registration
    • Administered by Canadian Internet Registration Authority (CIRA)
  • Domain name dispute resolution policy
    • A successful complainant must show:
      • Domain name is confusingly similar to the complainant’s trade-mark or service mark
      • The registrant has no rights or legitimate interests in respect of the domain name
      • The registrant’s domain name has been registered and is being used in bad faith
  • Lawyers v. Agents
  • Patent agents
    • To become a Canadian patent agent you must:
      • Have one year of Canadian work experience related to patents
      • Be a Canadian resident
      • Pass all four Canadian patent agent exams
  • Trade-mark agents
    • To become a Canadian trade-mark agent you must be a Canadian resident and either:
      • Have 24 months of work experience related to trade-marks and passed the qualifying examination; or
      • Be a lawyer (or a notary in Quebec) and have either:
        • Have 24 months of work experience related to trade-marks
        • Passed the qualifying examination
  • Differences between agents and lawyers
    • Lawyers able to work across IP spectrum, except hold themselves out as agents without the designation
    • Lawyers can act as IP litigators
    • Privilege issues
  • Canada v. the World
  • International IP Agreements
    • TRIPS sets minimum IP standards for members of the WTO
    • Berne/Rome Conventions
    • Patent Cooperation Treaty
  • Thank you!!