Patents, Industrial Designs, Trademarks and Copyright (Script 231)

From Clicklaw Wikibooks

Inventors, designers, entrepreneurs, writers and other creative and business people often want to protect their ideas and business inventions. But how do you protect an invention, or the brand name of a product, or the words of a song? Through patents, industrial designs, trademarks and copyright—and sometimes as trade secrets. This script discusses these types of what the law calls “intellectual property”.


Patents

What is a patent?

A patent is an agreement between an inventor and the federal government. The government gives the inventor the right to prevent others from making, selling, or using their invention in Canada (and possibly elsewhere) for the life of the patent. In return, the inventor shares the technological information behind their invention, so that others can benefit from and build on this knowledge when the patent expires.

So a company, National Mousetrap Corporation, that has developed a new and better mousetrap can apply for a patent to protect it.

A patent can be a valuable business asset. It gives the patent owner the competitive advantage of a limited monopoly. A patent owner can license the patent to others or sell it.

How do you get a patent?

Apply for a patent by filing a patent application with the Canadian Intellectual Property Office (CIPO) in Hull, Quebec. You have to pay the required fees. Your application must describe your invention in full and show you would put it into practice. The invention must meet patentability requirements, meaning that it is new and useful, and has inventive ingenuity.

But the Patent Office does not look at applications automatically. Within 5 years of filing the application, you must formally ask the Office to consider (or examine) your application and you must pay the examination fee. About 18 months after you’ve paid this fee, a government patent examiner familiar with the subject matter will examine your application and decide if it meets the requirements for a patent. If the examiner has any objections to the application, they will issue an examiner’s report explaining why they are rejecting it. The applicant (or a patent agent they hire) must then respond within a certain time with arguments or amendments (or both) to support their application. The process can take 1 to 4 or more years, and after that, if your application is approved, you’ll be granted a patent.

How long does a patent last?

A patent lasts for up to 20 years from the time you first submitted your patent application. You must pay annual government maintenance fees to keep your application or patent alive.

A patent application is a complicated process Most applicants hire a registered patent agent or patent lawyer to help them with the complicated application process. A list of registered patent agents is available from the Patent Office and from the Intellectual Property Institute of Canada (IPIC).

Time is of the essence

If you’re concerned about a competitor being on the same track, you should submit your patent application as soon as possible. In all countries, including Canada, the person who applies first gets the patent over another person who applies later, claiming the same invention. This is normally true even if the second person can prove that they invented the same product before the first person did.

Also, in Canada and the US, any public disclosure, use, or sale of your invention starts a one-year clock running. After that one year, if you have not filed a patent application, you cannot get a valid patent for your invention. Many countries don’t allow even this one-year grace period (in some cases, there may be a shorter grace period)—they don’t allow any public disclosure before a patent application can be validly filed, and you could lose your right to obtain a patent internationally if you rely on the one-year grace period in Canada. So it’s important to keep your invention secret and file a patent application (or assess your other options) before you publicly disclose your invention.


Industrial design

What is an industrial design?

Returning to the mousetrap example, imagine that the company has also designed its mousetrap so that it has an attractive shape or design that appeals to consumers. But the company is worried that a competitor might soon copy the look and visual design of the mousetrap. To protect the design, the company can apply to CIPO for an industrial design registration.

An industrial design registration protects the unique shape or ornamental appearance of a product. (This differs from a patent, which generally protects how an invention works). Examples of industrial designs include the shape of a table, the pattern of a fabric, the visual design of a computer keyboard, and the decoration on the handle of a spoon.

How do you protect an industrial design?

Apply to CIPO for an industrial design registration. You have to pay the required fees. You must apply within one year after the design, or an article showing the design, has first been publicly used, displayed or sold. Registration protects an industrial design for 10 years, but a maintenance fee must be paid after 5 years. Many countries outside of Canada and the US require you to submit your application for registration before there is any public disclosure of your design, the same as with patents.

Trademarks

What are trademarks?

Now suppose that the company, National Mousetrap Corporation, has also developed a catchy name to brand the product or a distinctive logo to use on the boxes the mousetraps are sold in and in magazine ads for its mousetraps. To prevent competitors from using the same logo or name, it would apply for trademark registration. (Copyright protection for the logo may also be available, discussed later.)

What is a trademark?

A trademark is a word, logo, symbol, or design (or a combination of these) used to distinguish a product or service from competitors in the minds of consumers. The words “UNDER ARMOUR” on athletic clothing, the red “K” on a box of Kellogg’s Cornflakes, and the alligator on Lacoste t-shirts, are familiar trademarks.

How do you protect a trademark?

Apply to CIPO to register a trademark and pay the required fee. You may file a trademark application based on use (if you have already started using the trademark in your business) or based on proposed use (you intend to use the trademark soon, but you haven’t yet started using it). The application is then reviewed by a trademark examiner who decides it the application meets the requirements for registration (for example, is it confusing with any prior registrations or applications). If the application is approved, it is published (to give others a chance to oppose the application). If no one opposes it, your trademark will be registered.

Although trademark applications are not as tricky and complex as patent applications, it’s still best to hire a trademark agent to help you with the process. The Trade-marks Office at CIPO keeps a list of trademark agents. So does the Intellectual Property Institute of Canada (IPIC).

Registering a trademark isn’t essential, but can be helpful

While you don’t have to register a trademark to use it, but there are advantages do doing so. Registration gives you the exclusive right to use your trademark (with the types of goods or services the trademark is registered for) throughout Canada for 15 years and the right to stop others from using a mark that is confusingly like yours. You can also renew your trademark every 15 years if you continue to use it in your business. On the other hand, an unregistered trademark can be protected only where you can prove the trademark is known and has an established reputation.


Copyright

What is copyright?

Suppose that the mousetrap company is ready to launch an advertising campaign. Its advertising department has created a brilliant script for a TV commercial. The law of copyright protects the ownership of the script.

What does copyright mean?

In Canada, the law automatically gives the author, artist or creator of original works like poems, books, plays, musical scores, software codes and paintings ownership rights or “copyright” in that creation. Copyright can arise only when a work has been fixed or created in some way: for example, a book has been written, a song recorded, or a movie filmed. Many items in your business—such as your logo, website, advertising materials and more—are probably protected by copyright. Copyright means that no one else can copy or substantially reproduce your work without your permission. This right generally lasts during the life of the author plus 50 years after they die.

When does copyright not apply?

There is no copyright in ideas; only the original expression of an idea can be copyrighted. And if you use your artistic work on a useful article, such as a decorative lamp or goblet, by using the article as a model or pattern to make 50 or more decorative lamps or goblets, then copyright protection, with some exceptions, isn’t usually available. You generally have to apply for registration of an industrial design instead. You also can’t claim copyright in a very short combination of words, such as the title of a book or song. This likely doesn’t meet the originality requirement.

Do you have to register your copyright?

No, because copyright is automatic, you don’t have to register it. But registering a copyright with CIPO (and paying the required fees) can help prove you own the copyright, especially if you have to sue someone for what’s called “infringement” of your copyright. When you register your copyright, you are the presumed owner of the work and the burden of proof is on the person challenging your copyright to disprove your ownership. If you don’t register your copyright, the burden of proof is on you to prove that you own the copyright.

How to contact the Canadian Intellectual Property Office

Canadian Intellectual Property Office
Place du Portage Phase I
50 Victoria Street
Gatineau, Quebec K1A 0C9
1.866.997.1936.


Non-disclosure agreements

Can you protect trade secrets and confidential business information?

Courts recognize that businesses should also be able to protect their trade secrets and certain business information that they want to keep confidential. This could include special recipes, training manuals, methods of doing business and inventions that aren’t patented—all of which is kept secret from the public. You don’t register this type of information. It’s necessary that a trade secret not be generally known. And you must have taken steps to keep it secret. Having employees, customers or business partners sign a confidentiality or non-disclosure agreement is the most common way to protect this secret and confidential information, and if someone breaks the agreement, you can sue them. One risk with a trade secret is that once it is no longer secret, it can be lost. Without a contractual obligation, nothing can prevent someone else from independently creating or reverse engineering the subject matter of your trade secret.


Summary

  • Patents protect new, useful and ingenious inventions.
  • Industrial designs protect the shape or ornamental appearance of manufactured goods.
  • Trademarks protect words, symbols and logos used to distinguish the goods or services of one trader from those of another.
  • Copyright protects original books and poems, computer program websites, artwork, music, movie scripts, performances, and similar things.
  • Non-disclosure agreements protect trade secrets and confidential business information.


[updated July 2018]

The above was last reviewed for accuracy by Ling Wong and edited by John Blois.




© Copyright 2018, Canadian Bar Association British Columbia Branch. Dial-A-Law is a registered trademark owned by Canadian Bar Association British Columbia Branch, a non-profit membership corporation.


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