o Results of the creative process such as ideas, expression of ideas, formulas, schemes, trademarks, and the like
o Protection attached to the ideas through patent, copyright, trademark, industrial design, confidential business
information, and others.
Is necessary because:
o Patents protect inventions and are essential to businesses in the pharmaceutical, electronics, chemical, and
manufacturing industries, as patents may be used to exclude others from using new technology.
o Industrial designs protect the appearance of useful articles against copying and are relevant to businesses that
offer goods to consumers.
o Trademarks serve to distinguish the goods or services one provider from those of another and are essential to
all businesses that sell goods or services to the public.
o Copyright prevents the copying of certain works and is the basis for businesses involved in art, publishing music,
communications, and software.
o Law government confidentiality is the means of protecting information such as marketing plans, customer lists,
database, and price lists, and is crucial to all businesses.
Offers both opportunities and challenges to businesses.
Patent: A monopoly to make, use, or sell an invention
Protected by the Patent Act:
o Processes or methods (Pay-per-use billing, system for applying a selective herbicide)
o Machines or apparatuses (Computer hardware, rake, vacuum cleaner)
o Products or compositions of matter (Pharmaceuticals, chemical compounds, microorganisms)
o Food and medicine, and processes for producing them are patentable, but new life forms created as a result of
genetic engineering is subject of controversy.
Exclusions from patent protection:
o Things that receive protection under other areas of law (computer software protected under copyright law)
o Things that do not meet the definition of a patent (scientific principles and natural phenomena)
o Things that are not patentable for policy reasons
Methods of surgical or medical treatment
Historically, business methods such as franchising arrangement, accounting methods, insurance
schemes, and tax loopholes. However, not automatically excluded from patent protection.
Requirements for patentability
An invention is new if it has not been disclosed publically.
Any public disclosure, public use, or sale of the invention prior to filling for a patent renders it “old”
One-year grace period is granted to inventors and someone who derived knowledge from the inventor
Must solve practical problem and successfully do what it purposes to do.
Must have industrial value, although it does not need to be commercially successful.
Some ingenuity or inventive step must be involved in the invention.
Difficult to apply in practice because it involve ascertaining the state of the art or knowledge prior to the
invention and analyzing whether the invention was obvious. Patent protection and application
o Application for a patent must be filled at the Canadian Intellectual Property Office on first-on-file system.
o Inventor is generally the first owner of the invention and the person entitled to apply for a patent.
Employee is usually the owner unless:
The employee was specifically hired to produce the invention
There is an express or implied agreement that precludes the employee from claiming ownership
o Due to the complexity of the patent application, it is usually done by a patent agent.
o Application consists of:
Specifications: Description of an invention contained in a patent (how to use it, when the patent expires)
Claims: Exclusive rights of the patent holder (what cannot be used, before the patent expires)
o Once patented,
Given 20 years of protection from making, selling, or suing the invention.
National in nature, and have no application in other countries.
Manufacturers usually mark the product as so, as it is legally useful.
Some may put “patent pending” or “patent applied for” to warn others that it may be granted.
Industrial design: Visual features of shape, configuration, pattern, ornamentation, or any combination of these
applied to a finished article of manufacture
o Protected by Industrial Design Act
o Judged solely by the eye. Functional aspects are not protected
o Shapes and ornamentations applied to toys, vehicles, furniture, and other utensils.
o Wallpaper or fabric
o Electronic or computer-generated icons on the computer, cell-phone, radio pager, and home applications
o Must be original and novel. Lower standard than patents. May be an old design previously not used for the
purpose of the specified article.
o Disclosure or use of the industrial design or articles bearing it is a bar to registration unless it was within a year
prior to filling the application.
Registration process and protection
o Does not rise automatically. An application must be submitted to the Canadian Intellectual Property Office.
o Application usually consists of a written description and graphic depiction.
o Designer is usually the owner unless it was ordered and paid for by another.
o Owner is given exclusive right to make, import, or sell any article in respect to which the design was registered.
o It is not mandatory to mark the design, but increases the chances of successful infringement action.
o An industrial design registration usually lasts for 10 years
Trademark: Word, symbol, design, or any combination of these used to distinguish the source of goods or services
o A color is not registrable as a trademark, but it may be claimed as part of a trademark.
o A sound is registrable.
o Trade name: Name under which a sole proprietorship, a partnership, or a corporation does business.
Receives protection under trademark law
Adaptation of a trade name can prevent the adaptation of a trademark.
o Unregistered trademark (common law trademark):
Protected under the common law and the trade-marks act
Comes into existence when a business adopts and uses it
Considered part of goodwill, and infringement of this can be addressed through tort of passing off. Rights are more restrictive in that it can only be used in the geographic areas in which it has been used
and the reputation of the owner has spread.
o Domain name: Unique address of a website
Controlled by various organizations that act as registrars, such as the ICANN and national authorities.
When domain names and trademarks conflict, disputes can be settled through litigation using the
general law on the adaptation and use of trademarks.
In the case of cyber-squatting, a complainant may negotiate the purchase of the domain name.
Cyber-squatting: Bad faith practices of registering trademarks or trade names of others as
domain names for the purpose of selling the domain name to the rightful owner or preventing
the rightful owner from obtaining the domain name.
Complaint must prove that the domain name is identical to their trademark, or similar enough.
Requirements for registration
Ownership is not established from invention or selection, but rather from:
Use of the trademark
o On the good or the packaging at the time of transfer in the ordinary course of business
o Used or displayed in the performance or advertising of service
o Not in use by some other business
Filing an application to register a proposed trademark
Making it known in Canada (if not used)
o Distinctiveness: Must distinguish the goods or services in association with which it is used.