IImagine IInvent IInvest IIntroduce Bridging the gap between knowledge and market

Imagine Invent

Invest Introduce

Bridging the gap between knowledge and market

Business Software and IP Protecting software

Patents

Copyright

Secrets

Other Barb EcclesManager, Technology Transferinnovations.lakeheadu.ca

CAUTION: This information is to be considered solely as a

guide and should not be quoted as or considered to be legal authority. It may become obsolete in whole or in part at any time without notice.

This seminar is not to be construed as legal advice.

Intellectual Property is …

… personal property that is concerned with ideas or inventions of which individuality or originality is an essential feature. Includes:

the expression of ideas a product of intellect IP may exist in many forms

Some types of Intellectual Property

Artistic works Literary works Inventions Discoveries Processes Knowledge Datasets Data bases Audio visual

material Circuitry

Biotechnology Genetic engineering

products Plant cultivars Germ plasma Computer software Circuit board

schematics Any other item,

knowledge, thought, or product of research

Intellectual Propertycan be protected by: patent copyright trademark industrial design integrated circuit topography plant breeders rights trade secret For more information, see:

Canadian Intellectual Property Office (http://cipo.gc.ca/) US Patent and Trademark Office www.uspto.gov

http://cipo.gc.ca/

http://www.uspto.gov/

Types of Intellectual Property Protection

Type Covers Rights Terms Examples

Patent Device, process, composition of matter

Inventor 20 years

Copyright Material form of composition

Author, creator Author’s life + 50 years

Books, software, music

Trademark Identifiable mark 15 years (renewable)

Logo, slogan

Plant Breeder Rights

Variety of plant Breeder 18 years Quantum Canola

Industrial Design

Aesthetic design of product

Designer 10 years Rug, cutlery design/shape

Integrated Circuit Topography

Integrated 3D design in semi-conductors

Designer 10 years Custom chips

Trade Secrets Anything n/a Indefinite Secret sauce, coca-cola recipe




Inventor 20 years





Logo, slogan



Industrial Design







Patenting Software? Some debate over whether software may be patented, especially

in Canada US Law: Software ITSELF is NOT patentable “software-based” inventions ARE patentable:

Inventions using software to produce a useful result Examples:

Software connected to and running hardware Software that processes data & produces useful result Internet business method patents, such as Amazon “1-Click”

In Canada, it’s even less clear.

Adobe Acrobat Reader

Why apply for a patent? Patent holder can stop others from making, using,

selling, and importing the invention protected by the patent

Patent holder can also give/rent/sell these rights to others, usually for a fee (called “licensing” or “assignment”)

Investors are often looking for a robust “patent portfolio” prior to investing money in a new company or product

What can be protected by Patents? Patent protection applies to inventions only. For an

invention to be patentable it must be: An art, process, machine, manufacture or

composition of matter or an improvement to such that is: New Useful, and Non-obvious

US Patent 6,293,874: User-Operated Amusement Apparatus for Kicking the User’s Buttocks

GB Patent 2272154: Spider Ladder

A spider ladder comprises a thin flexible Latex rubber strip (1) and a suction pad (5), the strip is designed to follow the inner contours of a bath. Suction pad (5) enables the strip to be positioned on or near the top edge of a bath. In use the suction pad is positioned on or near the top edge of a bath and the strip is allowed to fall under gravity down the inner contours of a bath. Trapped spiders searching for an escape route will scale the spider ladder by means of (2) and (3) the inner and outer steps respectively.

“Novelty” means that: at least one aspect of the invention is novel the invention is a combination of known elements

not previously seen together new use for an existing product NOT PREVIOUSLY DISCLOSED

Is it NEW?

What Constitutes Disclosure? Releasing important, novel details of the

invention. Loss of control of who learns about the

invention. Discussions under a non-disclosure agreement

or within the same institute are not disclosure. Presentation to anyone who hasn’t signed a

confidentiality agreement

The REAL question:

Is not typically:

“Can I patent my software?”

But instead should be

“SHOULD I patent my software?”




Inventor 20 years





Logo, slogan



Industrial Design







Copyright “copyright” is a set of distinct rights conferred by statute. The

owner of copyright has a right to: Produce or reproduce a work in any material form; Perform or deliver the work in public; Publish an unpublished work, and Give others the rights to do so.

Copyright vests in its owner the power to stop others from doing the things that a copyright owner has the right to do, and also protects the integrity of works through “moral rights”

© 2008 Barbara Eccles

Theory Copyright does not protect IDEAS Copyright protects the EXPRESSION OF IDEAS Consequence of this:

Anyone can follow the ideas set out in copyright protected thing: i.e. build a deck out of a “How to Build a Deck” book

Anyone can independently write a computer program that has the same result as your computer program

Why register copyright? Copyright arises as soon as the subject matter of

the copyright is created. There is no need to “mark” your works, but it is

recommended. i.e. Copyright © Barb Eccles, 2007. There is no need to “deposit” your works with

anyone, but it can help in enforcing your rights Registration is not required, but is recommended Registration is prima facie evidence of ownership


Three main kinds of “rights” in copyright

Economic rights (in “works”) Copyright protects economic interests of creators &

owners of “works” (musical, literary, artistic, and dramatic) Neighbouring rights (in “other subject matter”)

Protects economic rights of “other subject matter” (performances, sound recordings, and broadcasts)

Moral rights (in “works”) Protects the integrity and personality of the creator

(author) of a “work”


WORKS: Eligible “works” “works” are protected by copyright laws upon

creation or coming into existence, AS LONG AS: It is original It is fixed Nationality of creator/place of publication


Literary Works Exists if author used skill, labour, and ingenuity to

arrange thoughts: Books, pamphlets, letters, memos, email, school

assignments, exams Lectures, addresses, speeches, sermons Translations Computer programs


Dramatic Works “any piece for recitation, choreographic work or mime, the scenic

arrangement or acting form which is fixed in writing or otherwise” Scripts for ratio, TV, film, CD-ROMs Plays, Radio programs, operas, musicals, comedies “cinematographs” (i.e. audio-visual materials) expressed by a

process “analogous to cinematography” Films/videos that follow a script Improvised works, film of news item, home videos

Sound tracks Choreographic works: any work of choreography, with or without

a story line


Musical Works “any work of music or musical composition, with or

without works, and includes any compilation thereof.”

It is the composition or song, but NOT a CD or other sound recording embodying the composition or song Sheet music Arrangements, adaptations


Artistic Works Generally, “artistic” doesn’t mean it must be ascetically pleasing, or

be valuable as determined by art community Applies to works in a “visual medium”, including:

Paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, comic strips

works of artistic craftsmanship: “artistic” in this sense means it must possess an artistic character (admired & valued for appearance, gives emotional or intellectual pleasure or satisfaction)

architectural works (buildings, models of buildings) Fictional characters: certain ASPECTS may be an artistic work Compilations of artistic works


Combinations of Works Collective work: ”any work written in distinct parts by different

authors, or in which works or parts of works of different authors are incorporated” Newspapers, encyclopedia, magazines

Compilation “a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or parts thereof, or a work resulting from the selection or arrangement of data” Copyright in compilation will only exist in certain circumstances Databases: assembly of facts, data, content, and/or information

in an organized format, where individual components may be accessed. Database itself, not collection of data, is protected


Moral Rights Protect personality, honour & reputation of

artist/author Cannot be “assigned” by author (except on death),

but can be waived Three main categories

Right of paternity Right of integrity Right of association


Neighbouring Rights in Other Subject Matter Like copyright, but instead of being rights to “work”,

are rights to “other subject matter” “Other subject-matter” includes Sound recordings,

performances, & broadcasts (or communication) signals

DISTINCTION: copyright are rights granted to creators & owners of “works”, while neighbouring rights are granted to users of “works”


Performers’ Performances “live performances such as a musician performing a song, a

person reading a novel or poem, or an actor acting in a play”. Also performance of public domain work

Includes: Improvisation of dramatic, musical, or literary work Jam session Recorded performance ar, author, singer, musician and

dancer on variety of media including tape, CD-ROMs, video and film, and compilations thereof

Copyright protection in performers’ performance is DIFFERENT than the “right of public performance”


Neighbouring Rights: performer’s performance Performer protected against unauthorised fixation of

performance Performer protected against unauthorised

reproduction or broadcast of live performance Performer has right to authorise recording of

performance, or reproduction/broadcast of performance

Sometimes rental of performance is included as well


Sound Recordings “a recording, fixed in any material form, consisting of sounds,

whether or not of a performance of a work” Excludes sound track of a film wre the sound track

accompanies the film Examples:

Music, acted out drama, lecture, recorded seminars Recording of bird chirping

Could be 3 copyrights when a sound recording involved: 1st: in sound recording. 2nd: in musical work. 3rd: in

performer’s performance


Music Videos Components of music video may be protected in

different manners: Music likely as sound recording Visual aspect, under “audio-visual” category

discussed earlier


Communication Signals “radio waves transmitted through space without any

artificial guide, for reception by the public”, and include: TV broadcasts Pay-per-view broadcasts Radio signals

Do not include: Satellite or cable retransmitted signals


Who do you think owns copyright? In these situations …

As a student, you write an essay in MS Word and submit it for course credit?

As a business owner, you prepare a power point presentation and present it to investors?

You hire employees who create multi-media advertising tools for your company?

You hire an outside advertising agency to create a website for your company?


Who owns copyright interests? General rule, set out in Copyright Act: “Subject to

this Act, the author of a work shall be the first owner of the copyright therein”

Some specific exceptions to this, however, stated in the Act, such as employees & apprentices

There are no “authors” of “other subject-matter”, just owners

“authorship” and “ownership” are separate.


Ownership with Other Subject-Matter Performers’ Performance: performer owns the copyright in the

performance Sound Recordings: “maker” (or “person by whom the

arrangements necessary for the first fixation of the sounds are undertaken”) of recording owns copyright in it

Communication Signals: broadcaster (“a body that, in the course of operating a broadcasting undertaking, broadcasts a communication signal in accordance with the law of the country in which the broadcasting undertaking is carried on”) is owner of copyright in signal. NOTE: excludes “retransmission” broadcasters


Copyright duration General rule (often called “life-plus-fifty rule”)

“life of the author, the rest of the calendar year in which an author dies, and a period of 50 years following the end of that calendar year”

Q: if author passed away June 17, 1956, when will copyright expire? A: December 31, 2006

There are some exceptions to the general rule

(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,

Canadian Copyright Law.

Limitations on copyright: general

All or substantially all Fair Dealing (for research, private study, criticism,

review, or news reporting) Parody Public recitation of extracts Legislative, judicial & administrative proceedings


All or Substantial Part of Work “copyright” applies to all or a substantial part of a

work Copying less than a substantial part of a work is

NOT prohibited by copyright laws “substantial part” is not easy to define

Courts look at “quantity copied” and whether copied portion is an important part of the work



Fair Dealing USA has broader concept of “fair use” Still not clear what “fair dealing” encompasses WE DO KNOW the following:

Use must fit under one of these purposes: research, private study, criticism, review & news reporting AND

Overall use must be “fair”



Fair Dealing, cont’d To determine “fairness”, courts do a quantitative and

qualitative analysis, and consider other factors too “research, private study, criticism, review & news

reporting” not defined in Act During use, MUST mention source & author’s (or

artist or performer) name if known.



Limitations on copyright: specific works Computer programs Private copying of sound recordings Television broadcast time shifting Moulds of artistic works … reusing Works permanently situated in public place Incidental uses of copyright materials Private importation of works



Computer programs ONLY APPLIES TO OWNER OF PROGRAM: not

renter or someone who borrows Back-up copy Adaptation, modification, conversion or translation

for personal use and for compatibility reasons The copy/adaptation must be destroyed when you

cease to own original one



Private copying Sound recordings

Levy on blank audio media TV broadcasts

No specific provisions for this



Works in Public Places Applies to works permanently situated in one public

place (not one that moves from gallery to gallery), and includes architectural works

Anyone can make painting, drawing, engraving, photograph, cinematographic work & publish same of the other work

Incidental inclusion of copyright protected material in other material … ie news crew filming street scene with music playing in background



Special exemptions for certain organisations Schools: all levels of non-profit educational

institutions Libraries, archives Museums News (reporting & summary), Broadcasters Persons with perceptual disabilities Places of worship Agricultural, agricultural-industrial exhibition or fair


School Exemptions Instructors:

Manual copy for projection/display Tests and exams Taping radio & TV programs

Student performances Live performances of plays or musical works Playing sound recordings Playing radio or TV programs live

Publication of short passages in a collection

Innovation Management Office




Inventor 20 years





Logo, slogan



Industrial Design








Trade Secret “Keep the details to yourself” i.e. Coca-Cola formula or

Colonel Sanders’ recipe. Impractical approach in academic environment - too much

pressure to publish and too many public interactions. University research lab is not a corporate “skunk-works” -

can’t keep under wraps until fully ready...


What to keep secret? Patentable IP, at least until patent app. Filed Trade secrets Copyright & trademarks? Not necessarily

Business question with some is: do you have the resources to enforce your IP protection? Police it?


How to keep a secret … Confidentiality Agreements (CDAs, NDAs) Government FIPPA & Privacy legislation Certain professionals have confidentiality duties

Often is a need to disclose to some to get the assistance needed to commercialize

Innovation Management Office1294 Balmoral Street Main: 807.343.8724(NOTC Building) Fax: 807.766.7178

Thunder Bay, ON

innovations.lakeheadu.ca

Call us for help!

Barb Eccles, HBSc, JD

Manager, Technology Transfer

Tel: 807.343.8184

Cel: 807.626.2405

[email protected]

Bruce Holm, HBComm

Manager, Industry Liaison

Tel: 807.343.8793

[email protected]

mailto:[email protected]

mailto:[email protected]

Documents

IImagine IInvent IInvest IIntroduce Bridging the gap between knowledge and market