Overview of Intellectual Property

Mala JoshiPaul Lomic

May 4, 2009Ontario 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 breeders’ rights

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/surname: 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:

- Literary works- Dramatic works- Musical works- Artistic works- Cinematographic works

Rights of copyright owner

The copyright owner has the exclusive right to:

• Copy

• Publish

• Modify

• Translate

• 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:

- ornamentation on clothing or footwear- shapes of bottles or other containers- shape of the body of a vehicle- electronic 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 Secrets

• Specific product information

- formula- pattern- device- compound- process

• Business information

- customer lists- supplier lists- pricing - business plans

Any confidential information used in a businessthat gives a competitive advantage, and that can be kept a secret.

What is a “trade secret”?

• Confidentiality agreement

• Licence agreement

• Legal duty of confidence

- employees- agents- officers 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!!