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General
Info about Basic Intellectual Property
Concepts
In today's evolving information based economy, people are increasingly looking for answers and ways to exploit their non-tangible ideas and information. These types of non-tangible
properties are sometimes referred to as "intellectual property". This property must be "protected" because it can be stolen, but it can't be locked up. When it is stolen, it is also important to
be able to prove that it was yours in the first place. Often, however, it is hard to even describe such a thing let alone exercise control over it. It leads to more questions than answers.
What Kinds of Ideas Can Be Protected?
If an idea is your own, is new and original, there is likely some type of intellectual property protection available. There are two types of intellectual property protection which can be used.
Some types of IP are protected by statutes, and others are protected under common law schemes.
The most common types of statutory IP protection are patents, trademarks, copyright and industrial designs. Other methods of protection which are available include plant breeders' rights
protection, protection for integrated circuit topographies. Contracts can be used to protect trade secrets or confidential information or to license the use of a statutory IP right. There can be
over-lap between these various regimes of protection as well, and in some cases more than one type of intellectual property protection measure might be deployed in the implementation of a
wider intellectual property portfolio protection strategy.
Different intellectual property protection regimes each have different rules which are applicable to them. To summarize, patents are given for an invention that is new, useful and not obvious.
On the other hand a trademark is registrable for a mark or guise which you may have been using or may intend to use to identify your goods or services to the buying public. Copyright
protects your rights in written materials and the like, and arises automatically when you create an original work of art or literature. Some types of ideas which currently cannot be protected
by statutory forms of intellectual property protection include scientific theories or principles, laws of nature, business schemes or management practices, methods of medical treatment, or
ideas that are of a public nature or are obvious to someone dealing in the subject area of your idea or invention. Contractual protection and other common law methods can also be used.
Patents
Patents are the protection measure which applies to a new process or product, with some novel utility or a new or improved way of doing something previously known in the field. A patent
provides the inventor or inventors of some particular product or process with a limited monopoly to the exploitation of their invention. This monopoly provides the inventor with the exclusive
right to manufacture, use or otherwise exploit or sell the invention in the jurisdiction in which their patent is granted for a certain number of years, in exchange for making the knowledge of
their invention and its operation available to the public. A patent only protects your invention in the country in which it is granted.
Your patent lawyer can conduct a search and give you their opinion on whether your idea is patentable over the prior art already existing in the field of your invention. The 'prior art' consists
of publications or other patents in the field of your invention. The cost of a prior art search depends on the sources consulted and the complexity of your invention. There are numerous
advantages to doing a comprehensive patentability search before proceeding to draft and file a patent application. These include the ability to fine-tune your own patent application based on
problematic pieces of prior art revealed in the search to avoid Patent Office rejections based on those at a later date. The total cost of drafting and filing your application might be avoided if
the search uncovers a dead ringer for your invention which would negative the possibility of successful patenting of your invention.
A patent application consists of the following elements:
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abstract;
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background/field of the invention;
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detailed description of your invention;
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drawings, figures or other demonstrative aids; and
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claims.
The claims define the scope of your patent. The remainder of the document needs to substantiate the scope and contents of the claims. It is the claims of your patent which are interpreted
by a court in any infringement action. Claim drafting is a complex practice, and is not for the faint of heart.
Once your patent application is filed, it will be examined by the Patent Office in each jurisdiction in which it has been filed. Examiners in each Patent Office will review the claims and
disclosure to ensure that claim is only made to subject matter to which you are entitled, and that various formalities are met.
Exchanges between an applicant/agent and the Patent Office will occur at this stage, the applicant/agent making arguments and effecting changes or amendments as necessary to satisfy the Patent Office. If the Patent Office should reject some or all of your
application, there are usually avenues of appeal available as well. You should work closely with your lawyer or agent in the drafting and review of your patent application, as only you really
know just what the scope of your idea is and what it includes.
Patent applications should be filed promptly. If you hesitate in filing your patent application for some period of time after coming up with your idea, you run the risk of unintentionally
negatively affecting your patent rights. Your invention might fall into the public domain, you might tell some friends about it who in turn build your invention and use it themselves in public, or
some other inventor may apply for patent protection before you do. In most countries around the world with the notable exception of the United States, the first person to file a patent
application for a particular idea is the individual entitled to patent
protection, versus the first to invent. So remember, in a competition between two inventors for the patent priority to the
same or similar invention, "the earliest bird gets the worm".
Public disclosure of how your invention works before filing a patent application will bar patent protection in most cases. There are exceptions to this rule in Canada and the United States,
where there is a grace period within which protection can still be sought. If in the process of invention or evaluation you need to show your invention to someone, a non-disclosure
agreement should be signed. Your intellectual property lawyer can help you with the preparation of a non-disclosure agreement, sometimes also called a confidentiality agreement.
You do not need a patent in order to manufacture or sell your invention, however, if you do not obtain patent protection for your invention, nothing will prevent other people or companies
from making or manufacturing your invention or using it in whatever manner they might see fit, including selling it on the open market to the same customers which you might otherwise sell it
to.
You should be aware of what you wish to achieve by patenting, be it a competitive edge or a permanent record of your contribution to your field of endeavor. Consultation with a
professional can reduce disappointment to a minimum.
Trademarks
Consider what the results would be if you were required to change the name under which you sell your goods and services. Especially when starting a new venture, you will wish to avoid
the chance of building public awareness of your goods or services in association with a name or other mark that belongs to someone else. When you market a new product or service, you
build good will in the image of your product. The color of the package, logo, or the product name, all help to identify your goods or services and distinguish your goods and services from
your competitors. A trademark registration protects the goodwill that attaches to the name or other mark which identifies your goods and services to the buying public The following types of
things can be considered as trademarks:
The traditional boundaries of trademark protection are broadening, allowing people to claim protection for a broader range of distinguishing marks or characteristics for the goods and
services. You can file a trademark application to protect a trademark which you have already started to use, or a trademark which you are planning to commence using. Your lawyer or
agent can help you search the existing trademarks registered in Canada for ones which might be confusingly similar to yours, and they might also advise you on the descriptive or distinctive
nature of your proposed trademark. A trademark application can be filed and prosecuted on your behalf by your lawyer or agent.
You may want to do a search of existing trademarks before choosing a new trademark for your goods or services. You can accomplish this by searching proposed marks and using and
applying to register one that is differentiable from those already in the field, before beginning to invest time and money in its promotion. You can do an initial search on the Canadian
Trademarks Database maintained by the Canadian Intellectual Property Office. Click here to go there now.
Unlike the patent field, where a public disclosure of your idea in advance of filing a patent application can have serious negative consequences, the priority scheme in the trademark field is
different. The mark can and should be used in public in association with your goods and services as soon as possible, and even in advance of filing a trademark application if you so desire.
The use of the mark should be properly documented so that the right use priority can be claimed when the trademark application is filed.
A trademark registration provides you with nation-wide protection of your mark, in the country in which it is registered. Once registered, a trademark
registration lasts for 15 years and can be renewed. Obtaining a trademark registration, however, is only half of the battle. As soon as a trademark is adopted, and after it is registered, the proper measures need to be taken to
maintain its distinctive character - if the distinctive character of a mark is lost, the protection attendant therewith can also be lost, leaving the unsuspecting trademark owner without their
trademark rights. By registering your trademarks and taking proper measures in their use, the individual nature of your mark can be maximized and protected. Your trademark lawyer can
assist you in taking the necessary steps to preserve your trademark rights, and to enforce your rights against others who infringe your mark or pass off their goods or services as yours.
Trademark Services
The following are some of the services which our firm can offer to you:
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searches and opinions as to the registrability of trademarks and regarding the advisability of adoption of your proposed mark;
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drafting, filing and prosecution of trademark applications in countries around the world;
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opinions as to whether or not someone is infringing your trademark, or if you are infringing someone else's trademark;
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searches and opinions on the validity of trademarks;
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commencing trademark impeachment proceedings or challenges;
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advice and assistance in the enforcement of your trademark, or conversely advice and assistance in the case where you are accused of infringing someone else's trademark;
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assistance in the licensing, assignment or transfer of trademark rights, or other trademark-related aspects of business transactions.
Copyright
Copyright exists as of right in the author or creator of all original works, including literature, music, a painting or drawing, a computer program, and so forth. Copyright exists in the medium
carrying the creation as well as the creation. When you buy a book, tape or computer program, or get a photographer to take family pictures, you own the physical thing you receive, but
you do not then have the right to copy it, or play it to the public. These rights are held by the owner of the copyright.
Infringement of copyright can lead to statutory penalties and claims for damages against a potential infringer. Registration of your copyright interest is not necessary to perfect it. Registration
does, however, provide evidence that you do hold copyright and simplifies an action for copyright infringement. No prior search is necessary in the copyright area as long as the material in
question is your own, or owned by you.
Copyright Services
The following are some of the copyright services which our firm can provide:
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copyright searches;
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drafting, filing and prosecution of copyright registration applications in countries around the world;
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opinions as to whether or not someone is infringing your copyright, or if you are infringing someone else's copyright;
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advice and assistance in the enforcement of your copyright, or conversely advice and assistance in the case where you are accused of infringing someone else's copyright;
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assistance in the licensing, assignment or transfer of copyright, or other copyright-related aspects of business transactions.
Industrial Design
An industrial design is a design used to ornament a commercially produced article. This might be a texture, a particular shape or something else used to differentiate an article. Industrial
designs can be registered with the Canadian Intellectual Property Office. Industrial design protection is a way of protecting the " look" of an industrial product, but it may not be used to
protect any functional features. It has limited use, but in the right situation it may provide the protection you need or at least the most protection that is possible.
A search can also be done of records at the Canadian Industrial Design Office to see if there is anything else confusingly similar already registered by another party.
Industrial Design
Services
The following are some of the services which we can offer to you in the industrial design area:
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searches and opinions as to the registrability of industrial designs;
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drafting, filing and prosecution of industrial design or design patent applications in countries around the world;
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advice and assistance in the enforcement of your industrial design, or conversely advice and assistance in the case where you are accused of infringing someone else's design;
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assistance in the licensing, assignment or transfer of industrial design ownership rights, or other related aspects of business transactions.
Other
Types of Statutory IP Regimes in Canada
Other types of intellectual property which can be protected by statute in Canada include plant breeders' rights and integrated circuit topographies. We will be pleased to provide more
information on either of these topics by request.
Trade Secrets & Other Confidential
Information
It may be that your idea is something you can make and sell, and yet the people who buy it will not be able to figure out how to reproduce or "reverse engineer" it. Industrial and chemical
processes, along with food processing methods, are sometimes amenable to this. If this is the case, you might maintain your intellectual property as a trade secret. Recipes are an example.
Another prime example of something which all businesses would like to maintain as a trade secret is their customer list.
The advantages of trade secret protection include the fact that your invention is not revealed, so that others cannot see what you are doing and how. This can make copying and infringement
less likely. As well, the protection does not expire as long as the idea is kept secret.
Care must be exercised however, in the use and control of confidential information, since the disadvantages are substantial as well, including the fact that if your secret becomes known, your
protection is likely gone. You may be able to sue the person who revealed it, but this may be small comfort; and someone else may make the same invention, patent it, and then prevent you
from using it.
Trade secret programs can sometimes be implemented in concert with other intellectual property measures. Your intellectual property lawyer should be consulted to implement a proper
trade secret protection plan.
Legal Services in the Handling of
Confidential Information and Trade Secrets
The following are some of the services which your intellectual property lawyer or agent can offer to you in the protection and exploitation of your confidential information:
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drafting of confidentiality and trade secret provisions;
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implementation of workplace trade secret programs;
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advice and assistance in the enforcement of your confidentiality protection, or conversely advice and assistance in the case where you are accused of breaching a confidentiality
arrangement with someone else;
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assistance in the licensing, assignment or transfer of confidential information, or other related aspects of business transactions.
Other Issues in the Exploitation of Intellectual Property
No matter what kind of protection you use, proper protection allows you to license, sell, use, assign or otherwise deal with your intellectual property. It is, however, up to you as the owner
of such intellectual property, to try and interest others in obtaining and/or exploiting your property. It is also your own responsibility to prevent the unlawful use of your work. The
Government will not assist you in the enforcement of your intellectual property rights.
A common misconception is that once a patent or other statutory registration is obtained in respect of your intellectual property rights, the government will then enforce and protect your
rights for you. It is up to you as the owner of an idea to protect your rights. As such, your job has only begun once an intellectual property is created. Usually the assistance of a lawyer is
employed in the enforcement stage of intellectual property protection.
Marketing Your Idea
There are many different ways in which you can go about marketing your product or idea. Once you have a patent or other type of protection in place, you need to find someone to
manufacture a device for you, to print a publication for you or something else, and of course you need to find your market for a new product. The following checklist contains a number of
points and suggestions for the inventor or holder of intellectual property to consider in looking at various commercialization strategies:
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Someone might find out about your patent or other intellectual property and approach you. Given the number of people and the number of ideas present in our society, however, you
should not count on this happening and should actively seek out marketing assistance or a marketing partner if you are seriously interested in pursuing the commercial exploitation of
your idea.
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A marketing consultant could be hired to help establish where the market for your idea is, if anywhere, and what would be the best way to approach that market.
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In putting an actual marketing system together, appropriate tax and financial planning measures should be taken. Your accountant, or tax or corporate lawyer, should be consulted.
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Another obvious avenue to locating someone who may be interested in marketing your idea is to approach various people or various companies who already work in that area to see
if some type of a relationship can be struck. It is important to note in all disclosure of your idea to other parties for its evaluation, that unless your patent, trademark or other
intellectual property application has already been granted and registered, your disclosure should be made in confidence. Significant legal
consequences can flow from the disclosure of your invention in advance of either the filing or issuance of your intellectual property registration or application. A non-disclosure agreement should be used.
Most organizations who you will approach will already have a standard form confidentiality agreement which they use to protect themselves as well since they may also be working in
the same area. Your lawyer should be consulted with respect to any such agreement, and you should carefully maintain a record of everything which is disclosed in these situations.
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It is time and money well spent to consult an intellectual property lawyer when considering the preparation or execution of an intellectual property sale or license agreement with
respect to your idea.
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An unsolicited approach from someone or some organization about helping you with your ideas from a marketing view point for evaluation, and to help you find investors, customers or the like, should be approached with caution. Again, for your own safety these types of matters should be discussed with your lawyer before you enter into any agreement.
Enforcing Your Intellectual Property Rights
Various avenues can be pursued if you find someone who is infringing your intellectual property. Your intellectual property lawyer can advise you on these various issues and enforcement
measures. One of the most obvious enforcement remedies, of course, is a Court action for infringement. A successful Court action can stop the infringement of your intellectual property
rights and potentially recover damages or profits for you. A court action should be carefully considered, however, as it is of considerable expense and takes a lengthy period of time to carry
through to its conclusion.
A side note to be made here is that if you in your intellectual property have used a portion of the intellectual property owned by someone else - for example you have come up with an
improved gadget that is based on and still employs the same principles as a protected gadget owned by someone else, you must have made arrangements with the owner of such other
device so that you cannot be found to be infringing their intellectual property. Similar arrangements need to be made where portions of copyrighted works, or trademarks, are used.
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