overview of intellectual property
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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!!
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