INTELLECTUAL PROPERTY PRIMER

APRIL 24, 2013 © 2013, WILSON VUKELICH LLP. ALL RIGHTS RESERVED.

YTA Legal Perspectives Peer Group Session

Session Leaders

Diane L. Karnay

Counsel , WILSON VUKELICH LLP Tel: 905.944.2950

Toll Free: 1.866.508.8700 x2350 [email protected]

Heather Whitten

Partner, WILSON VUKELICH LLP Tel: 905.940.8733

Toll Free: 1. 866.508.8700 x2231 hwhitten @wvllp.ca

Joseph Mariconda

P. Eng., B.A.Sc. (EE) Registered Patent Agent, USPTO and CIPO

GASTLE AND ASSOCIATES

Tel: 289.383 427 Website: www.gastle.com

Email: [email protected]

Intellectual property

People occasionally confuse patents with trade marks, copyrights, industrial designs, and integrated circuit topographies. They are all rights granted for intellectual creativity and are forms of intellectual property. Trade secrets are the confidential information of a person or organization.

Copyright

Copyright provides protection for original literary, artistic, dramatic or musical works (including computer programs), as well as for performances, sound recordings and communication signals.

Protection exists for the lifetime of the author plus 50 years, or (if the author dies prior to publication) for 50 years from publication.

For photographs and sound recordings, protection exists for 50 years from the date they were created.

Copyright

Copyright protects the original expression of the idea but not the idea itself.

Copyright subsists in Canada immediately upon creation and without the requirement for registration Although not mandatory, registering a copyright in Canada is presumptive evidence that the registered owner owns the copyright and that the work is protected under the Copyright Act. Registration gives public notice of an owner's rights.

Copyright

Whether or not registered, a notice containing the following elements should be placed on all published copies of a work to give public notice of the rights:

"Copyright (or ©) [year of first publication] [owner's name]. All Rights Reserved".

Copyright Modernization Act

Bill C-11, the Copyright Modernization Act, S.C. 2012, c. 20 (the “CMA”) received Royal Assent (was passed by Parliament) on June 29, 2012, and most of its provisions were brought into force on November 7, 2012.

The CMA attempts to balance the policy concerns of increasing innovation and competition against creators’ needs to protect their works.

Copyright Modernization Act

The CMA is intended to:  Update the rights and protections of copyright owners to better address the challenges and opportunities of the Internet, and to be in line with international standards;  Clarify the roles and responsibilities of Internet service providers and Internet search engines, and make the enabling of online copyright infringement itself an infringement of copyright;

Copyright Modernization Act

      Permit businesses, educators and libraries to make greater use of copyright materials in digital form; Promote creativity and new methods of teaching by allowing educators and students to make greater use of copyright material; Legitimize every day activities by permitting certain uses of copyright material by consumers; Give photographers the same rights as other creators; Ensure that it remains technologically neutral; and Mandate its review by Parliament every five years.

Industrial Design

Industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these) applied to a finished manufactured article. The features must be original and must appeal to the eye. Examples of designs: clothing and fashion accessories, automobile bodies and interiors, furniture, appliances and all types of manufactured goods

Industrial Design

An application to register the design must be filed within one year of its first publication. A design must be new to be registrable, and it must be sufficiently different from previously registered designs that it would not be confused with them. The maximum term of protection is ten years.

Industrial Design

The rights given by a Canadian industrial design registration extend throughout Canada, but not to other countries. You must apply for registration in other countries separately. Likewise, foreign registrations do not protect an industrial design in Canada.

A design can be protected under common law trade mark rights as part of the product's "get up", and may even be registered under the Trade-marks Act as a "distinguishing guise“.

Industrial Design

What can be registered as an industrial design:

Yes

   a repeat pattern applied to wallpaper the shape of a perfume bottle the ornamentation applied to a t-shirt 

No

the visual features of a running shoe    the way an MP3 player functions the material of which a protective mask is made the idea of putting advertising on bus shelters

Integrated Circuit Topographies

Integrated circuit topographies refer to the three-dimensional arrangement of the electronic circuits in integrated circuit products or layout designs.

ICTs are found in modern technology, communications, entertainment, manufacturing, medical and space technologies, and ordinary household appliances.

Integrated Circuit Topography

The Integrated Circuit Topography Act came into force on May 1, 1993. Protection under the Act is extended to people of other countries on a reciprocal basis.

The Act protects against copying of registered topographies, but does not prevent others from developing integrated circuit products that use other topographies to provide the same electronic functions.

Integrated Circuit Topographies

In order to protect an ICT, it is necessary to apply for, and be granted registration. The application must be filed within two years of the first commercial exploitation of the topography.

Registration is granted to the owner of an original circuit design. A topography is considered original if it is developed through intellectual effort, and is not just a reproduction of all, or a large part, of another topography.

Integrated Circuit Topography

The term of registration is for 10 years. The term ends on December 31 of the tenth year after the year of the first commercial exploitation, or the year of the filing date, whichever came first.

Integrated Circuit Topography

Registration gives exclusive legal rights to exclude others from reproducing the topography, and from manufacturing an integrated circuit product that incorporates the topography.

The exclusive rights to a registered topography are not infringed in circumstances where a person reproduces the topography for the sole purpose of analyzing, researching, or teaching about ICT.

Trade Secrets

Trade secrets are a type of confidential information of a company:  they represent more specialized or technical information for which a higher level of secrecy is required;  the information must be specific and ascertainable; and  there must be an intention to keep the information secret and treat it as strictly confidential.

Trade Secrets

Both the Uniform Trade Secrets Act, adopted by the 1989 Uniform Law Conference of Canada, and case law, define trade secrets.

Examples of trade secrets are Coca-Cola Corporation’s formula for its soft drink or KFC’s special 11 spices and herbs recipe for its fried chicken.

Trade Secrets

Companies can ensure the protection of their trade secrets as follows:  restrictive and confidentiality covenants for all persons having access to the trade secrets;          safe storage locations for information with locks or limited access; electronic key access to rooms or information; clear marking of confidential information; limited access to computer-stored information and changing security passwords; visitor restrictions for certain areas; employee policies on confidential information; routine verification of confidentiality procedures; routine employee reminders of confidentiality policies; and a policy prohibiting the removal of confidential information or goods from company premises.

Trade Secrets

Companies should also be aware of the various available enforcement measures and legal actions they can undertake to prevent or stop a violation or potential violation of trade secrets:      breach of contract (express or implied provision), breach of confidence, breach of fiduciary duty, unjust enrichment, and wrongful interference with the contractual relations of others.

Trade Secrets

Trade secrets are not able to be registered unless they have some intellectual property component inherent in them.

Trade-marks

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 Definition from the Trade-Marks Act : “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”  Key is that a trade-mark indicates the origin of wares or services

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Trade-marks (cont’d)

 used in association with specific wares or services  not confusingly similar with any existing trade-marks  must actually use the trade-mark

Trade-Marks

 A mark used by an entity to distinguish his, her or its wares or services from those of others  Can include word(s) and/or design  Represented visually  Implies exclusive use

So that’s a trade-mark!

 Obvious trade-marks include names of products or services

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Trade-mark Common Law Rights

 arise automatically from the use of the trade-mark in commerce  subject to prior rights of others  limited geographically  rights in association with specific wares or services

Why Register a Trade-mark?

 Create a distinctive Brand  The exclusive right to use your mark across Canada  Prevent others from using your mark or anything confusingly similar  Crystallize value for your business (franchise, license or stream income)  Purchasers love it!

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Registration of Intellectual Property

Trade-marks

 specific application made to Canadian Intellectual Property Office (“CIPO”)  subject to prior rights of others  gives exclusive rights to the registrant to use the trade-mark in commerce in association with specific wares and/or services

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Trade-mark Registration (cont’d)

 rights throughout Canada, but no other country  registration lasts for 15 years, and may be renewed  currently takes between 8 and 12 months to process application Breakfast for Business April 28, 2020

Trade-mark Check-up



Note changes to existing trade marks

“Morphing” trade-marks may not qualify as use of the original trade-mark. Adding or deleting parts of the trade-mark may affect the continued registration    BULL ≠ CII HONEYWELL BULL MINTEL PUBLICATIONS ≠ MINTEL SPORTSTICK ≠ SPORT 

Changes or additions to wares and services

Trade-mark Check-up

 Police existing marks to ward off infringers/ Stop others from registering marks that are confusing with your marks  Infringement is the unauthorized use of a registered trade-mark (or a confusing trade-mark or trade name) in association with goods or services of the kind in respect of which the mark was registered  Clearly control the use of the marks with proper license agreements

Trade-mark Check-up

Ensure Use that is continuous, consistent and distinct

Wares “Use” means being displayed on wares or their packaging Services “Use” means being displayed during the performance of services or displayed in advance on promotional materials In both cases, use must be in Canada and in the normal course of trade

Use it or Lose it!

 To protect the owner’s rights, any “use” must be by:  The owner, or  A licensee of the owner, provided that the owner retains control over the quality and character of the goods and services

Infringement

 Actions to consider  “cease and desist” letter – usually quite effective as infringers are often unaware that they are infringing  court action – usually in Federal court, with possible remedies of injunctions, damages or profits award, and delivery of offending wares and means of production

Foreign Trade-marks

 Venturing into other countries on a country by country basis  “CTS”: Community Trade-mark System (all 27 EU Countries  Madrid System ( 84 Member Countries)  Check the translation!

Patents

  The government gives the inventor the right to stop others from making, using, or selling the invention from the day the patent is granted to a maximum of 20 years after the day on which the patent application was filed.

Rights extend throughout Canada, but not to other countries. You must apply for patent rights in other countries separately. Likewise, foreign patents do not protect an invention in Canada.

What information is provided in a patent application?

The inventor must provide a full description of the invention. Patent applications are open to public inspection 18 months from the earlier of:  the filing date in Canada; or  the filing date in another country in certain conditions (this date is known as the "convention priority date”).

People may then read about (though not make, use, or sell) the invention without the inventor’s permission.

What can be patented?

There are three basic criteria for patentability:  The inventor must be the original inventor and the invention must show novelty (be the first in the world).

  The invention must show utility (be functional and operative). The invention must show inventive ingenuity and must be a development or an improvement of an existing technology that is not obvious to someone skilled in that area.

What can be patented?

The invention can be:  a product (for example, a door lock),   a composition (for example, a chemical composition used in lubricants for door locks), an apparatus (for example, a machine for making door locks),   a process (for example, a method for making door locks), or an improvement on any of these.

When to apply for a patent?

In Canada, patents are granted to the first inventor to file an application, so it’s best to file as soon as possible after completing your invention. You lose the race if a competing inventor files before you do.

Filing too soon, however, may mean missing important features from the patent application. It is important not to advertise, display, or publish information about your invention before you are ready to file for a patent.