Tombstone Review of Intellectual Property

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What is Intellectual Property

Property comes in three versions: real property (also known as real estate), personal property (i.e. cars, clothing) and intellectual property.

  • Intellectual property in Canada in two forms: statutory and common law.  Statutory IP encompasses:
  • patents
  • trade-marks
  • copyright
  • industrial design
  • integrated circuit topography
  • Plant Breeders Rights (or Plant Variety Registration in US lexicon).

Traded-secrets and confidential information are strictly common law, unlike the US that has a Uniform Trade Secret Act adopted by a number of States.
What are sometimes called the exotics and attendants of classic intellectual property include:

  • personality / celebrity rights
  • traditional knowledge
  • geographic indicators
  • farmers’ rights / privileges
  • privacy (in the context of generation & compilation of data)
  • competition (or anti-trust)
  • WTO / WIPO treaties in terms of substantive / procedural rights
  • FAO treaties in terms of genetics / access & benefit sharing
  • internet principles (i.e. freedom of expression)
  • domain names
  • telecommunications regulation (carriage v content)
  • Notice of Compliance regulations (brand & generic drugs)

Kindly be clear: ideas are not intellectual property per se. Ideas might be a trade secret, but they are not generally protectable under statutory intellectual property.

The philosophical arrangement underlying IP is that society bestows a fixed term monopoly as a reward for the disclosure of the invention, work, circuit, plant or design. The converse argument is that society grants a fixed term monopoly to encourage the invention, creation, or breeding.

Patents

A patent is an invention.

The invention must be novel, non-obvious and useful.  Simply put this means no one else in the world has created it; it would not have been invented in the normal course of events (i.e. arm rests on chair) and is useful.

Patent is a negative intellectual property right: the ability to prevent others from making, using, or selling your invention as claimed. A patent does not grant the owner a right to sell or in certain circumstances use the invention. Think of drugs/pharmaceuticals. The patent protects the formula (composition of matter) but you need regulatory approval to sell the drug. However no one but you as patentee can make the drug. Most of the world, and more recently the US, operate on the first to file not first to invent system.

A patent lasts 20 years from the filing date and only effective in the jurisdictions (nations) for which you apply. There is no such thing as a “world wide patent”. Someone can read you Canadian patent in other country, and granted you have no patent in that country, they can make your invention.

Patents may be prepared and filed by a patent agent.  I am NOT an agent.  However I do license patents.  Patent agents draft the actual patent and deal with the Canadian Intellectual Property Office (CIPO), Patents section. It can take 2 or more years for a patent to issue. Regardless, all patent applictions are made public 18 months from filing.  To reiterate: patent rights expire 20 years from filing not issuance.

A patent lists claims.  Should anyone infringe those claims the patent owner has the right to seek damages.  It matters one if one or a dozen claims are infringe — damages flow.

Trademark

Trade-marks are a word, symbol, design or distinguishing guise (i.e. lemon shaped lemon juice container) that denote either the quality or source of the goods. A trade-mark must be distinctive, used and not confusing.  Like a patent it is only valid in the jurisdiction.

Trade-marks can be registered ® or common law?

Canada is one of the world’s more conservative jurisdictions.  A trade-mark can be:

  • coined word (Exxon)
  • coined word unpronounceable
  • word with a design
  • design
  • numbers
  • numbers and words
  • numbers, words, design
  • slogans

While in other jurisdictions these are allowed trade-marks, generally these are not allowed in Canada

  • colour
  • sound (until recently with the MGM Lion’s roar was allowed)
  • holograms
  • taste
  • smell
  • positioning

Trade-marks come in a number of categories:

  • common law mark
  • registered mark
  • distinguishing guise
  • certification mark
  • section 9 mark
  • geographic Indicators
  • Olympic and Paralympic Act
  • Agricultural trade marks (food quality grades)

Unlike other IP, not only do trade-marks come in statutory or common law versions, trade-marks are a “use it or lose it” property.  Failure to associate / use one’s mark with one’s goods or services can result in the expungement of the mark.

Trade-marks are unusual in that while a mark has a fixed term, namely15 years from issuance, that term can be indefinitely renewed.  The philosophical basis of that approach is in part that the mark represents wares and services and is not extending the monopoly period of a patent, copyright or PBR.

A trade-mark agent may prosecute a trade-mark application for you. I am registered trade-mark agent. However my focus in on a very ticklish part of trade-marks: licensing.  The terms and conditions of a trade-mark licence need extra care since a mark denotes quality and source.  Therefore the license must address quality, use and standards.

Should someone use a mark confusing similar to the registered or common law mark, then the owner of the mark has a right under s. 7 of the Trade-mark Act or under the tort of passing off to stop the using of the confusingly similar mark.

Copyright

Copyright is the most complex of the intellectual property rights, in part because different concepts have been merged into it at different times.

The classic definition of copyright is an original work that is fixed.   The categories of work are:

  • Musical
  • Literary (which includes software)
  • Artistic
  • Dramatic

Original merely means not copied. But it an unresolved dynamic in both Canadian and American courts as to whether any degree of originality is required or merely “sweat of the brow” or some blend of the two.  

Copyright protects the expression of the idea, not the idea.  So the idea of star-crossed lovers from squabbling families is not copyrightable.  However Romeo and Juliet or West Side Story is.

Copyright has three rights categories:

  • copyright (also known as economic rights)
  • neighbouring rights
  • moral rights

Given that the Berne Convention that is ratified by most every country in the world, copyright exists worldwide at the moment of creation.  Copyright does not need formal registration to exist.  However, copyright registration is useful is proving the time of creation.  (Or you can mail yourself the work but just don’t open the envelope).

Unlike patents and trade-mark under the concept of fair dealing in Canada (and fair use in the US) a third party can use parts of the copyrighted work for research, study, criticism or new reporting.  Recent proposed copyright amendments will also allow use for education and parody.

Industrial Design

Industrial design requires novelty and decorative use on a useful item make in qualities of 50 or more.

Registration requires:

  • A design with aesthetic appeal
  • Original work
  • Novel design
  • Not contrary to public morality or order

Design means a decorative use that addresses configuration, shape, pattern or ornamentation that appeals to the eye.

Original means not identical or strikingly similar to any existing or pending design. Novel means the exercise of intellectual property to produce for the first time the particular decorative device.

The term of registration is 10 years. Like patents, registration is necessary and only effective in the jurisdiction (nation).

Plant Breeders Rights

If a breeder knows the genomics of the plant then the breeder will patent that gene.  In Canada while the higher life form may not be patentable — unlike the US and most other jurisdictions — the gene may be patented and those rights enforced notwithstanding the gene being contained in an organism. However if the breeder only knows the phenotype of the plant, then PBR is the only available statutory IP protection.

The touchstones of PBR are the touchstones of the UPOV treaty: distinct, uniform and stable.  In Canada in a legal context a variety is a cultivar registered under the Seeds Act.  A denomination is a variety or cultivar registered under PBR.

The PBR grants the owner exclusive rights to

  • sell
  • propagate
  • use and cut flowers (ornamentals)
  • denominate the variety

PBR has a major exception.  The denomination can be used as in input by a third party into a breeding program, but the resulting plant must not be essentially derived from the denomination.

While not an exemption, the distinction worth noting is the purpose to which the seeds are put. A farmer growing wheat that sells the seeds/grain for propagation is infringing. A farmer growing wheat that sells grain/seeds for food is not.

TYPE

CONCEPT

TRAITS

CREATION

COMPASS

TIME (yrs)

Patent

invention

Novel, useful & non-obvious

Application

country

20

Copyright

expression

Fixed & original

Creation

worldwide

Life + 50

Trade-mark

symbol

Distinctive & not confusing &

             used

Common law use or

Upon issuance

country

15 renewable

Industrial Design

design

Novel  & decorative

Upon issuance

country

10

Plant Breeders R.

variety

Distinct, uniform and stable

Upon Issuance

country

18

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