Chapter 18: Intellectual Property
Intellectual property: describes the results of the creative process (ideas, etc)
Protects application and expression of ideas
Can register and obtain property over patent, copyright, trademark, industrial design etc.
Patents
Patents protect inventions, cannot patent an idea
Protecting electronic products might qualify for a patent protection
Patent: a monopoly to make, use or sell an invention
Given monopoly for 20 years if file for patent and after that it becomes public domain
There are some things that cant be patented
o Things that receive exclusive protection under other areas of the law (like a
computer program because they have protection under copy right law)
o Things that don’t meet the definition of a patent (like scientific principles
because they are discoveries not inventions)
o Things that are for policy reasons (like methods of medical treatment)
Requirements for Patentability: (granted for an invention that is new, useful an unobvious)
New:
o Hasn’t been disclosed to public more than 1 year prior
o Can’t patent something that have been sold or used publicly
Useful:
o Must solve some practical problem, and have industrial value
o Can’t patent art, or something purely esthetic
Unobvious:
o There must be some originality or inventive step involved in the invention
o Can’t patent a change that would be obvious to someone skilled in that field
Patent Protection and Application:
Based on a first-to-file system – if someone else has independently invented the same
thing, Canadian intellectual property office will give priority for patent to the first person
who filed application
Patent Act doesn’t have provisions for ownership of inventions created by employees in
course of employment – but the owner will be the employee unless the employee was
1 hired just for the purpose of inventing something OR if there is an implied agreement that
says that the employee is not the owner of the invention
i.e. If you are employed to produce a method to protect electronic products, and invent a
method in OWN time, you are inventor and can apply for patent and has no obligation to
share invention with employer (unless contract states differently)
Application has 2 main parts
o 1. Specification: Describes how invention was made/how to put into practice
o 2. Claims: exclusive rights of the patent owner (before expiry of patent)
Gives the inventor right to exclude others from making, selling or using the invention
Patents only exist in the country where the application was made and granted
Industrial Designs: protection for appearance of mass produced
Visual features, shape, configuration, pattern etc or any combo of hose applied to a
finished article of manufacture
To register- has to be original and novel
o Original - standard is lower than standard of inventiveness
o Design can be fully new or old design that hasn’t been applied before
o Novel – disclosure or use is no good unless within same year as registration
Registration is same as patent application
Gives right to owner exclusively to make, import, sell any article related to design that is
registered
Can stop competitors from manufacturing and selling that looks confusingly similar
Lasts 10 years
Trade Marks
The name of your product – phrase, letters/numbers, logo, design, an combination of
those that is used to distinguish products or services from those of others
Colour, smells and odors cannot be registered as a trademark
Sounds are trademarks
Trade names: the name under which a sole proprietorship, partnership, corporation does
business – name that business is carried on – could be name of corporation
The R in the circle is registered for a trademark
The TM is unregistered for trademarks
Gives owner exclusive rights to use the trademark and prevents others from using similar
trademark
Last for 15 years in Canada
2 Common Law Trademarks (unregistered)
Registered or unregistered they get protection under common law and trademark act
Common law trademark exists when a business adopts and uses it
Part of goodwill of a company
Infringement of trademark by competitor using same or similar trademark can be
addressed through tort of passing off
Only has rights in geographic areas where it has been used and areas where the
reputation of owner has been spread
Trademarks and Domain Names
Domain name: unique address of a website
TLD (top level domain) – to the right of the dot
o .com, .org (general) .ca, .uk (country specific)
SLD (second level domain) – to left of the dot
o Usually a business name, trademark
Registration of Trademarks
Must show you have title to trademark – can only register what you own
o In use if used or displayed in performance or advertising of services
o Can be registered if not in use if registrant proposes to use it as a trademark in
Canada
o Show it is well known in Canada
Trademark is distinctive
o Invented words
o Must distinguish the goods or services
Trademark is registerable
o CANNOT be primarily the name or surname of person who is living or died
within 30 years i.e smith
o CANNOT describe character or quality of the services or place of origin i.e.
sweet for apples, Ontario wines, shredded wheat
o CANNOT be misdescriptive of character or quality i.e all silk for cotton shirt
o CANNOT be translation in a different language i.e avion
o CANNOT be confused with another trademark i.e mego
Copyright
3 The right to prevent others from COPYING or MODIFYING certain works
Protects original works of literary, musical, or dramatic things
Not protected - facts, names, slogans, short phrases, titles
Must be original, and fixation
Originality: work must originate from author, cant be copied from someone else
Fixation: work must be expressed in some fixed form – like a paper or diskette
o Fixation separates unprotectable from protectable to give a means of
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