Chapter 18: Intellectual
Intellectual Property: the results of the creative process, such as ideas, the expression of ideas, formulas, schemes,
trademarks, and the like; also refers to the protection attached to ideas through patent, copyright, trademark, industrial design,
and other similar law.
- “intellectual property” also describe “bundle of rights” people have regarding their ideas or ways they are expressed
Intellectual property offers both opportunities and challenges to business.
Creation of Intellectual Property Rights
A monopoly to make, use, or sell an invention.
- Statutory right that provides protections for inventions
The Patent Act defines an invention as “any new and useful art, process, machine, manufacture or composition of matter or
any new and useful improvement in any art, process, machine, manufacture or composition of matter.
-Process or methods (pay-per-use billing system, method of cleaning carpets)
-Machines or apparatuses (computer hardware, hay rake)
-Products or compositions of matter (pharmaceuticals, chemical compounds)
Exclusions from Patent Protection
-Things that receive exclusive protection under other areas of the law
-things that don’t meet the definition of a patent
o“discoveries” vs inventions
oScientific principles wouldn’t count but a practice application would count
-Things that are, for policy reasons, not patentable
Requirements for Patentability
- New or novel invention
- “new” if it hasn’t been disclosed publicly
oDisplaying new product at show, marketing brochures, etc.
- 1-yr grace period
- Solve some practical problem and must actually work what it’s supposed to do
- Must have industrial value – need not be commercially successful
- Practical use – not mere scientific curiosity
- “inventiveness” – must be some ingenuity or inventive step involved in the invention
Patent Protection and Application
- Not automatically
- App must be filed with Canadian Intellectual Property Office
- First-to-file system
- Generally, an employee will be owner unless
oEmployee was specifically hired to produce invention and makes invention in course of employment
oAn express or implied agreement that precludes the employee from claiming ownership of inventions relating
to and developed in the course of employment
-Patent agent: professional trained in patent law and practice who can assist in the preparation of the patent
2 main parts to the app
1. Specifications: the description of an invention contained in a patent
2. Claim: exclusive rights of the patent holder
- App is examined by Canadian Intellectual Property Office and if successful, patent is issued upon payment of fee.
- The word “patented” and patent number can be put on all goods. Marking isn’t mandatory though. – But reduces
- Or could put “patent pending” or “patent applied for” before app is compete
- Patent gives right to exclude others from making, selling, or using invention for 20 years from date of filing application
as long as maintenance fees are paid.
- National in nature – only in Canada
Industrial Design Act provides protection for appearance of mass-produced (50+) useful articles or objects.
Industrial Designs Defined
The visual features of shape, configuration, pattern, ornamentation, or any combination of these applied
to a finished article of manufacture.
- Usually taken to mean the shape, configuration pattern, or ornament, or any combo of these, that in a finished article
appeals to and is judged solely by the eye
- Only shape but not functional aspect
- Example: toys, vehicles, furniture, etc.
Requirements for Registration
- Original and novel
- Lower standard of inventiveness to patents
- High degree of ingenuity or creativity isn’t necessary
- Could be new design or old design that was never applied for purpose of ornamenting article
- 1-yr grace period, otherwise no disclosure or use
Registration Process and Protection
- Application usually drafted by patent agent as well to Canadian Intellectual Property Office
- Owner of rights in design make app
- Designer is owner unless design was ordered and paid for by another
- App has description and graphic depiction, photograph, or drawing
- Certificate of registration is issued if app good
- Registration gives owner exclusive right to make, import, or sell any article which design is registered
- Can stop competitors from manufacturing as well for 10 years
- (D) marks the symbol – next to design owner
Word, symbol, design, or any combo of these used to distinguish a person’s products or services from
those of others. Function is to indicate the source or origin of goods or services.
Can be anything but usually…
-Word(s) (Xerox, The Body Shop)
-Slogan (“Just Do It”
-Design (McD’s golden arches)
-Series of letters (BMW)
-Symbol (nike’s “swoosh”)
-Distinguishing guise (Coca-cola bottle) – shaping of wares or their container, or a mode of
wrapping or packaging wares.
-A combo of above (London Fog with a depiction of Big Ben for brand of clothing)
Colour can’t be a trademark but can be part of one. Smells or odours not registered in Canada, but sounds are.
Name under which a sole proprietorship, a partnership, or a corporation does business.