Frequently Asked Questions
The patent system is based on the principle that, as a matter of public policy, it is desirable to encourage the making and exploitation of inventions. The system provides a bargain between the government and the inventor. The inventor is required to make a full disclosure of the invention to a government patent office, which is sufficient for other skilled workers to practice the invention, and this disclosure is eventually made available to the public. In exchange, the inventor is given the exclusive right to the invention for a fixed term. What is a Patent? A patent can be characterized as a negative right, in that it gives that inventor or patent owner the right to exclude others from making, using or selling the invention - it does not necessarily give the patent owner the right to make the invention. This often happens where an invention is an improvement on some existing technology, for which one or more patents are still in force, so that the owner of an improvement patent needs permission from the owner of an earlier patent to work his invention. Generally, a patent is granted under the law of each country, and hence a patent is only effective in the relevant territory. The patent term will be governed by national law, which for many countries is 20 years calculated from the filing date. Why Obtain a Patent? A patent enables the owner to exclude competitors from copying an invention. This exclusivity enables the costs of research and development, new tooling and market development to be recovered. Patents can be transferred in much the same way as other types of property. For example, if the patent owner is unable to exploit the invention directly, a patent can be sold outright or licensed to others. In deciding whether patent protection should be pursued, one major issue is whether the financial return expected from the period of exclusivity justifies the costs in pursuing and maintaining a patent. For example, where large amounts of time and money have been spent on research, development and new production equipment, these fixed costs will undoubtedly need to be recouped over a period of time, and a patent can provide the necessary umbrella of protection. This is particularly desirable where a new product can be readily reverse engineered by competitors who would not be concerned with recovering research costs. What Sort of Inventions are Patentable? To be patentable, an invention must be of a technical nature. The strict definition of an invention includes a process, machine, article of manufacture or composition of matter. If the invention is embodied in some piece of equipment or apparatus, it will generally be considered to be patentable subject matter. Similarly, processes or methods, for example chemical processes or methods of molding articles, will be considered to be patentable subject matter. However, ideas or creations that do not have practical application, or which are purely artistic, will not be considered to be patentable. For example, a pure scientific principle, an abstract theorem, a business scheme or a work of art will not be considered patentable subject matter. In the biotechnology area, proteins, vaccines and lower life forms, such as bacteria and viruses, are considered patentable. Higher life forms cause more difficulty, and currently are not patentable in Canada, although they may be patentable elsewhere, notably in the United States. Software-related inventions are a growing field, and again the boundary between patentable and unpatentable subject matter is difficult to define and varies from country to country. Where a software-related invention is clearly associated with some conventional patentable type of technology, then the overall invention will usually be patentable. Novelty and Inventiveness An invention must also be sufficiently 'novel' and 'inventive' to justify a patent being granted. Whether an invention is new or not is usually a straightforward question. The test in Canada, and many other countries is simply whether the invention has previously been disclosed to the public by any means anywhere in the world before the filing date of the first patent application. Thus, disclosures in patents, printed publications of any sort, oral disclosures or simple uses of the invention can put an invention in the public domain. This includes both disclosures by others and disclosures by the inventor. The issue of inventiveness is determined by inquiring whether the invention is obvious to a person skilled in the relevant field. This test is subjective and standards vary from country to country. An invention will be held to be obvious if it is something that would immediately occur directly to someone, or for which there is some reason or basis in the art to consider making the proposed modification or change. On the other hand, where an invention is contrary to conventional teaching or produces some new and unexpected result, than this suggests that it is indeed inventive or non-obvious, and hence patentable. Inventorship and Ownership The rights to an invention start with the inventor, and an inventor is any individual who has made a significant contribution to the invention. Most inventions are made in the course of employment, and routinely inventions are assigned to the employer. To avoid any dispute on this issue, companies employing technical staff who may make inventions should ensure that their contracts of employment govern ownership of inventions. The Patentability Search Before going to the expense of preparing and filing a patent application, it is usually worthwhile to do a patentability search in order to determine whether a patent can be obtained for the invention at all, and if so, what the scope of protection may be. This type of search is done by reviewing relevant existing patents, and possibly other publications and publicly available information. The results of such searches should be conducted under the direction of, and interpreted by, a qualified lawyer or patent agent. When Should an Application be Filed? For most countries, the United States being a notable exception, the rights to a patent are awarded to the first person to file a patent application (assuming that person is the genuine inventor or has obtained rights from the inventor). For this reason, it is always advisable to file a patent application as soon as possible, since it is conceivable that another person may independently make the same invention and file earlier. A further and more practical consideration when deciding to file is that the novelty of an invention is judged against any information that is publicly available at the earliest filing date. Hence, the later an application is filed, the more information becomes available for a patent office examiner to rely on to challenge the novelty of the invention. At a minimum, for many countries it is essential that the first application be filed before the invention has been in any way "publicly disclosed" by the inventor or anyone else. For North America, in some circumstances, it may be possible to file after a public disclosure has occurred. Obtaining Foreign Patent Protection Canadian patents apply in Canada only. Patent protection in foreign countries must be separately obtained. This may be done either by applying directly to the patent office of the relevant foreign country, or applying for the foreign patent through the deferred filing route under the Patent Cooperation Treaty (PCT). Regardless of which route is chosen, the local laws of the relevant country will ultimately apply. Most countries other than Canada and the United States require absolute worldwide novelty and do not provide the inventor with any grace period in which the invention can be made available to the public prior to filing. Marking Patented Products Products no longer have to be marked as "patented" in Canada, but incorrectly so stating is an offense under the Patent Act. It is generally advisable to mark patented products as "patented" or "patent pending" if a patent application has been filed as appropriate in order to warn off potential infringers. Alternative Protection - Trade Secrets An invention can be practised, sold or licensed in secret. Persons to whom the invention is communicated in confidence, or who are under a contractual obligation to keep it secret, can be restrained from using it in an unauthorized manner and may be liable to pay damages for any unauthorized use. However, there is no recourse against persons who independently make the invention, and such a person could obtain a patent and thereby obtain the exclusive rights. Also, there is only protection as long as secrecy is maintained and it is very difficult to do so in many technology areas for any prolonged length of time. Trade Mark A trade mark indicates to the public that the goods or services associated with it originate with a particular trader, and serves to distinguish such goods or services from those of other traders. A trade mark's ability to distinguish a particular trader is referred to as the mark's 'distinctiveness'. Why Register A Trade Mark? The Trade-marks Act is federal legislation which establishes a registration system, administered by the Canadian Intellectual Property Office ('CIPO'). Trade mark rights can exist in a mark irrespective of whether the mark is registered under the Trade-marks Act. However, registered trade marks are easier to enforce and have a number of important advantages - first, since there is a Register maintained by CIPO, competitors can get notice of prior rights. Second, protection for the registered mark is given throughout Canada, regardless of whether the trade mark is known in the area where the defendant is located. In contrast, the owner of an unregistered trade mark must also establish the distinctiveness of the trade mark, that is, that the public exclusively associates the trade mark with the goods or services of the owner, and even if the requisite degree of distinctiveness can be shown (and this is sometimes expensive and difficult to prove), the scope of protection is limited to the geographical area in which distinctiveness is proven. Third, a registration provides prima facie evidence of the ownership of a work, and the dates of first use shown on the registration page. Lastly, a registration may have a greater persuasive impact on a potential infringer than an allegation of rights arising through use. How Is A Trade Mark Different From A Trade Name? A trade name or business name, although registered with provincial authorities, does not of itself confer any right to the name that is enforceable against third parties. Rather, registration simply enables the public to ascertain who is using a particular trade name. A trade name may incorporate a trade mark, or itself be used as a trade mark (to denote the origin of goods or services, as opposed to being the name of a business) and thus be registrable and enforceable as a trade mark (e.g. McDonald's is both a trade name or trade style, and a trade mark for restaurant services). Choosing A Trade Mark The choice of a trade mark may have a significant impact on its enforceability. Trade marks which are coined, or otherwise have no dictionary meaning in relation to the goods or services for which they are used, have strong or 'inherent' distinctiveness. These marks are most easily enforced and are entitled to the widest scope of protection. Trade marks which describe a quality or characteristic of the relevant goods or services receive a narrower scope of protection. However, marks which are merely descriptive of the goods or services receive no protection under the Trade-marks Act, because they cannot technically function as a trade mark to distinguish the goods or services of a particular trader. In between these two extremes are marks that are suggestive, but not descriptive, of the wares or services. Some marks may be a composite of elements with some of each of these features. Clearing A Trade Mark Once a potential trade mark has been selected, the next step is to determine if it is available for use and/or registration, free from any possible adverse claims. This is done by conducting a search of the trade marks Register and to better assess availability, investigating use of trade marks by parties who may not have registered their rights and searching corporate and business names. The purpose of conducting a search of the Register is not just to locate trade marks which are the same as the selected mark, but also to identify potentially confusing trade marks which could pose obstacles to the use and registration of the selected mark. Given the importance of such a search, it is essential that the search be conducted under the supervision of, and the results interpreted by, an experienced trade mark lawyer or agent. Not all proprietors seek to register their trade marks, and the risk of an objection by a prior user of a trade name or of an unregistered trade mark is an important consideration to bear in mind when selecting a mark. Therefore, a review of available trade directories in the relevant industry, telephone directories, and other sources of business information (known collectively as a "common law search") is often also done. Common law searching can be somewhat difficult and time-consuming because there is no comprehensive database available which may be searched. The level of clearance searching required will depend on the situation. In some cases, a potential registrant will be content with a simple search of the records of the CIPO. In other situations, especially where there will be a large investment in the launching of the new trade mark, greater certainty is desired and so a full and thorough common law search will also be conducted. However, since comprehensive common law searching is difficult, there can be no guarantee that a trade mark can be used without some risk of an adverse claim. The magnitude of such risk is a function of the scope and complexity of the search. A trade name (including a corporate name) should also undergo a clearance procedure, similar to that for a trade mark, prior to its use, especially if it is to be used to any significant extent in public. Registering A Trade Mark A trade mark may be registered in Canada based on any one or more of the following grounds: (1) actual use or proposed use in Canada by the applicant, (2) making known in Canada by the applicant, or (3) registration and use of the trade mark abroad by the applicant. Use by a licensee instead of the applicant itself may also qualify. The last two grounds enable foreign applicants to obtain rights before there has been actual use in Canada. Again, an experienced trade mark lawyer or agent should be consulted to determine how best to proceed. A trade mark application is subject to review by an examiner at the CIPO. The examiner may approve the application for advertisement as filed, or may raise various requirements or objections. For example, there may be an objection that the mark is clearly descriptive of the relevant wares or services, that the wares or services should be defined in greater detail or that the mark is confusing with a prior application or existing registration. Applicants are given an opportunity to respond to such objections and if appropriate to amend the application. Once an application is approved, a formal notice of approval is issued, and thereafter the application is advertised in the Canadian Trade-marks Journal. Once advertised, the application may be opposed by one or more parties on a variety of grounds, including prior use of a confusingly similar trade mark or trade name. Trade mark oppositions, which are often lengthy and complex in nature, are decided by the Opposition Board, usually on the basis of evidence filed in the form of affidavits or declarations, and in some cases cross-examinations thereon, as well as written and/or oral arguments by the parties. If no opposition is filed, or an opposition is unsuccessful or withdrawn, the application proceeds to allowance. Once allowed, in order to obtain a certificate of registration it is necessary to pay the registration fee and, if the application was filed based on proposed use, file a document entitled a Declaration of Use, stating that the mark applied for is now in use in Canada. A decision of an examiner or the Opposition Board regarding any of the above matters may be appealed to the Federal Court of Canada. Generally, the minimum period required to obtain a trade mark registration is 10 to 12 months, however this period can be substantially longer, especially where an opposition is filed. Once registered, the term of registration is 15 years from the date of issuance and is renewable for successive terms of 15 years each. After the third anniversary of registration, failure to use a registered mark in Canada may result in the registration being vulnerable to summary expungement or amendment. Using A Trade Mark Properly Care should be taken to ensure that generic use of a trade mark is strictly avoided. If a trade mark becomes generic, it loses its ability to distinguish a particular trader as the source of the goods or services associated with the trade mark. Such loss of distinctiveness may make a registered mark vulnerable to expungement. Therefore, trade marks should never be used as the name or function of a product, but it is permissible for the trade mark to modify the name of the product, e.g. ASPIRIN® brand acetylsalicylic acid. Even though under Canadian law it is not necessary to do so, trade marks should be denoted with the ® or TM symbol wherever they are used. Furthermore, it is advisable to identify the owner of the mark, particularly if it is used by a licensee. Licensing A Trade Mark The Canadian Trade-marks Act no longer requires recordal of licensees as registered users, provided that the trade mark owner has licensed other users and has direct or indirect control over the character or quality of the goods or services associated with the mark. Also, special considerations arise regarding the proper notice to be employed in relation to the licensed goods or services when a trade mark is used by a licensee. Enforcing Trade Mark Rights Actions for infringement of a registered trade mark are generally brought in the Federal Court of Canada, and the Trade-marks Act provides remedies including damages or profits, delivery up of all infringing goods and injunctive relief against further unauthorized use of the infringing mark. Infringing goods may also be detained by Canada Customs at their point of entry into the country. Where the rights to an unregistered trade mark, trade name or business name are violated, the proprietor of the mark or name is entitled to bring an action for the tort of passing-off against the party. Such tort actions must be brought in provincial superior court. In an action for passing-off, the plaintiff must prove not only that the defendant's mark is likely to cause confusion between their respective businesses, but must also prove that the public exclusively associates the mark with the goods or services of the plaintiff. Some of Canada's most important trade mark litigation has reached successful conclusion in the hands of MO IPlawyers. Our extensive courtroom experience is not confined to major cases; simple disputes receive equal attention and concern. Before commencing any litigation, however, we carefully review all options available to the client, including negotiation and alternative dispute resolution. When litigation is necessary, we carefully plan the strategy with the client, work in a cost-effective manner, and always treat the client as an essential member of the litigation team. Copyright Copyright subsists in Canada immediately upon creation, and without registration, in every original literary, dramatic, musical and artistic work, including computer programs, databases, multimedia works, books, photographs, advertisements, logos, and sound recordings. A copyright owner has the exclusive right to control the work's (a) reproduction, in whole or substantial part, in any material form (including electronic form), (b) public performance, (c) public telecommunication, (d) publication, (e) translation, and (f) adaptation. The owner may also prohibit the distribution of unlawful copies. The Act also provides an author with moral rights, which enable the author to demand credit as creator of the work and to prohibit changes to the work, or its use with any product or service, that would detrimentally affect the author's reputation. How Long Does It Last? In North America, as a general rule, copyright expires 50 years after the year in which the last author dies. There are some exceptions, most notably copyright in photographs and sound recordings expires 50 years after the year in which those works were created. Moral rights exist for the same period of time as the copyright. The author is generally the first owner of the copyright, but exceptions do exist. For example, copyright in works created by employees in the course of their employment are owned by the employer. Copyright can be assigned or licensed, in whole or in part, and may be divided by geographic territory. Licenses may be oral, but assignments must be in writing to be valid. Assignments and license agreements should be registered in the Copyright Office. Moral rights cannot be assigned, but may be waived by the author. Although not mandatory, registering a copyright in Canada does provide advantages. The certificate is deemed presumptive evidence that the registered owner owns the copyright and that the work is protected under the Copyright Act. Furthermore, a registration gives public notice of an owner's rights and may prevent an innocent infringement defence by unauthorized users of the work. For these reasons, registration certificates are beneficial in litigation proceedings and in warranting ownership of the copyright to prospective licensees of a work. Regardless of whether copyright is registered, a notice containing the following elements should be placed on all published copies of a work to give public notice of the rights: "Copyright (or ©) [year of first publication] [owner's name]. All Rights Reserved". Infringement And Remedies Infringement occurs whenever a person exercises any of the copyright owner's exclusive rights without consent. Distributors, who did not copy the work, but who knowingly sold or imported infringing copies, can also be liable. Infringement actions are generally brought in the Federal Court of Canada, although there is concurrent jurisdiction with provincial courts in appropriate circumstances. Remedies include damages, profits, delivery up of infringing copies and injunctions. Defences to infringement include challenging the plaintiff's ownership, alleging that only an insubstantial amount of the work was taken, or pleading that the use constituted a "fair dealing" under the Copyright Act. The "fair dealing" exemption permits reasonable copying of a work for limited non-commercial purposes, such as private study and criticism. It is also a criminal offence, in some circumstances, to knowingly infringe a copyright, punishable by prison terms ranging up to five years and/or fines of up to $1,000,000. International Protection For Copyright Canada is a member of the Berne Convention on Copyright, the Universal Copyright Convention and the recent World Trade Organization (WTO) Agreement. Generally speaking, these treaties protect copyright internationally in works created by Canadians or nationals of other member countries, and/or those first published in Canada or any other member country. Recent Changes (Bill C-32) Recently, important changes to the Copyright Act were introduced. Among these are: * A royalty right for performers and producers of sound recordings which are publicly performed or broadcast Copyright vs. Industrial Design Protection Where an artistic design is applied to a useful article which is produced in quantities of 50 or more, the copyright becomes unenforceable. The only enforceable protection available in this situation is an industrial design registration. A "useful article" is defined by the Copyright Act as one which has a function other than merely serving as a carrier for the artistic or literary material. For example, a decorative spoon, which functions as a piece of cutlery, would be a "useful article" and the design on such a spoon would not be protectable by copyright. There are exceptions to this rule, however. For example, copyright remains enforceable if the design merely constitutes a graphic or photographic representation applied to the face of an article, depicts a fictional character or is a trade mark. These exceptions preserve copyright in "spin-off" merchandise from films and television shows. What Is An Industrial Design? Industrial designs consist of features of shape, configuration or ornament that give manufactured articles aesthetic appeal and thus contribute to their commercial value. Examples of designs can be seen in clothing, automobile bodies, furniture and appliances. While the subject matter of industrial designs is relatively straightforward, the legal issues that come into play in protecting new designs can be complex. Industrial designs are fundamentally expressions of style or form but also incorporate functional considerations. Protecting industrial designs, therefore, generally involves both copyright and patent issues. How Do I Protect An Industrial Design? To protect a design in Canada under the Industrial Design Act, the design must be applied for within one year of first publication or offer for sale. Many foreign countries however require that an application be filed before any public disclosure has occurred. A design must be new to be registrable and must be sufficiently different from previously registered designs. The maximum term of protection in Canada is ten years. Marking Registered Designs It is no longer mandatory to mark articles as a "registered design". However, proper marking of an article will prevent infringers from avoiding damages using an "innocent infringer defence". Marking should be as follows: "(name of owner of design)". Industrial Design Industrial designs consist of features of shape, configuration, pattern or ornament that give manufactured articles eye appeal. When different industrial designs are applied to similar articles, those articles may work identically, but they differ from each other in their appearance. Examples of designs can be seen in clothing and fashion accessories, in automobile bodies and interiors, in furniture, appliances, office equipment and essentially, in just about all types of manufactured goods. Industrial designs derive their value from making articles attractive. While the subject matter of industrial designs is relatively straightforward, the legal issues that come into play in protecting new designs are among the most complex in the intellectual property field. Like other works of art, industrial designs are fundamentally expressions of style or form. However, designs that involve utilitarian articles must also incorporate functional considerations. Industrial designs are thus properly associated with copyright, but they tend to spill over into the subject area of patents as well. Copyright prevents the unauthorized copying of an original artistic work, but copyright does not protect the concepts expressed in the work, only the specific manner of their expression. Patents, by contrast, can provide broader protection for new structural features in an article that give it functional advantages, but patent protection is only available for developments that meet the law's high standard of inventiveness. The law therefore treats the products of intellectual creativity quite differently, depending on whether they are matters of form, or of function. The ultimate goal of modern design, however, is often to achieve a perfect marriage of form and function. The distinction between the two is in fact often blurred in successful industrial designs to the point where it can be difficult to recognize. The competing policy considerations underlying the two dominant paradigms of copyright and patents lead to a number of special provisions in the law's treatment of industrial designs. Moreover, industrial designs can also present trade mark issues as well, since an article's appearance may often serve to distinguish it from similar articles available from other manufacturers. In Canada, legal protection for industrial designs may be found through copyright, under the Industrial Design Act, and within the law of trade marks. The Industrial Design Act and The Copyright Act To protect a design under the Industrial Design Act, the design has to be registered. An application to register the design must be filed within one year of its first publication. A design must be new to be registrable, and it must be sufficiently different from previously registered designs that it would not be confused with them. The maximum term of protection is ten years. Wherever possible, it is usually desirable to rely on copyright to protect an industrial design, either in addition to obtaining an industrial design registration, or as an alternative. This is because copyright arises automatically, without any cost, and the term of protection lasts throughout the life of the author of the design plus an additional fifty years. Moreover, a design may qualify for copyright protection even if it is not novel or significantly different from earlier designs, as long as it was not copied. Notwithstanding the advantages of copyright, registration under the Industrial Design Act nevertheless provides a primary means of protecting designs, because for many industrial designs copyright does not arise, or it is either lost or becomes unenforceable if articles comprising the design have been mass produced. For designs created prior to a statutory amendment that came into force on June 8, 1988, copyright is not recognized at all in patterns for textiles, wallpaper, and so forth. For other designs created prior to the 1988 amendment, copyright is automatically lost once more than fifty articles embodying the design have been made. For designs created after the 1988 amendment, a significantly modified set of rules apply. Copyright in such designs becomes unenforceable once more than fifty articles embodying the design have been made only if the articles have a utilitarian function. If they merely serve as a substrate for artistic matter, copyright continues to be enforceable regardless of the number of articles made. Copyright in such designs also remains enforceable where the design is one of certain specified types, for example, representations of a real or fictitious being, and graphic or photographic matter applied to the face of an article. Copyright is as well recognized in patterns for textiles and so forth created after the 1988 amendment. Even where copyright is available to protect a design, the additional protection of an industrial design registration may offer some further advantages. One is that it provides an absolute right to exclude, and not merely the right to prevent copying. Thus, unlike copyright infringement, it is not necessary to show that an infringer of a registered design ever even saw it. Trade Mark Protection for Designs Trade mark rights as well come into play in protecting industrial designs. However, these rights are dependant on establishing that the public associates the design with a single source of the product. Such a design can be protected under common law trade mark rights as part of the product's "get up", and may even be registered under the Trade-marks Act as a "distinguishing guise" provided that such a registration would not unreasonably limit the development of the relevant industry. Trade mark rights also have advantages as a source of protecting industrial designs. For one thing, they have the potential to last indefinitely. Moreover, in certain cases, problems that can be encountered in enforcing copyright or design rights, such as establishing a chain of title, can sometimes be avoided by relying on trade mark rights. Summary Protection of industrial designs can involve a consideration of a number of different areas of intellectual property law. This is true not only for Canada, but for many important foreign jurisdictions as well, including the U.S. Early consultation with legal counsel is the best course to follow to ensure that valuable design rights will be fully exploitable. Litigatio Some of Canada's most important intellectual property litigation has reached successful conclusion in the hands of MO IPlitigators. Our extensive courtroom experience is not confined to major cases; simple disputes receive equal attention and concern. Before commencing any litigation, however, we carefully review all options available to the client, including negotiation and alternative dispute resolution. When litigation is necessary, we carefully plan the strategy with the client, work in a cost-effective manner, and always treat the client as an essential member of the litigation team. Who Can Start an Action? Intellectual property rights generally must be enforced through the civil courts in Canada. An action for the violation of an intellectual property right may be brought by the owner of that right, or by someone else who has an interest in the right, such as a licensee. Also, in some cases, an exclusive distributor of an article protected by an intellectual property right may be able to commence an action. Is Intellectual Property Litigation Different? In a word, yes. The remedies available under the Patent Act, Trade-marks Act, Copyright Act and Industrial Design Act can be somewhat specialized and, therefore, intellectual property litigation requires special consideration. For example, many intellectual property litigation matters are decided at the interlocutory injunction stage and hence special care and attention is essential in the early stages of litigation and in interlocutory matters in particular. Intellectual property litigation is commenced in the Federal Court of Canada for several reasons. First, any remedies granted by the Federal Court are automatically enforceable Canada-wide. Second, various federal statutes grant the Federal Court exclusive jurisdiction over certain matters, such as issuing a declaration of non-infringement of a patent, impeaching a patent, or expunging a trade mark registration. Lastly, the Federal Court is considered a "specialist" or "expert" court for hearing intellectual property matters. What Remedies are Available? Patents A successful plaintiff in a patent infringement action will be awarded an injunction preventing the infringer from practicing the invention for the term of the patent, and delivery up of any offending products, and may elect either damages or the infringer's profits, starting from the date of grant of the patent. "Reasonable compensation" may also be awarded to compensate for damages in respect of activities which occurred prior to the grant of the patent, between the date of the publication of the application and the date of grant. Patent litigation raises complex factual and legal issues, and may involve considerable expenditures and require expert witnesses. Since the validity of issued patents will almost always be an issue, patent litigation requires an in depth knowledge of patent law, as well as experience in the courts which most frequently handle these issues. Trade Marks Remedies for trade mark infringement and passing-off include damages or accounting of the defendant's profits, delivery up of all infringing goods and injunctive relief against further unauthorized use of the infringing mark. Infringing goods may also be detained by Canada Customs at their point of entry into the country. It is also not uncommon in trade mark matters, especially when dealing with "fly-by-night" operations such as individuals selling counterfeit merchandise, including watches or t-shirts, to seek an Anton Piller order or a John or Jane Doe order to allow the trade mark owner to seize infringing articles and deposit them into the safekeeping of the court pending a determination of the litigation. MO IPobtained the first John Doe order in the Federal Court against trade mark counterfeiting. Since courts do not treat such extraordinary remedies lightly, experience is required in obtaining these extremely effective types of relief, alternatively, in working with the police in the event it is decided to press for criminal sanctions. Where an unregistered trade mark, trade name or business name is violated, an action for the tort of passing-off may be brought in provincial superior court. Actions for passing-off are often very complex and require the production of specific types of evidence to prove a plaintiff's common law rights to a name or mark. Copyright As with patents and trade marks, the remedies available for copyright infringement include damages, an accounting of profits, delivery up of infringing copies and injunctions. Provisions for seizure of goods prior to entry into Canada are also found in the Copyright Act. It may also be a criminal offence, in some circumstances, to knowingly infringe a copyright, punishable by a prison term ranging up to five years and/or fines of up to $1,000,000. Industrial Design For infringement of a registered industrial design, a proprietor may seek damages, punitive damages, an accounting of profits, injunctive relief and disposal of any infringing articles. What Options do Prospective Defendants Have? Patents A granted patent is only presumptively valid, and its validity may be challenged either outright, by bringing impeachment proceedings in the Federal Court, or by raising invalidity as a defence to infringement. Since an action for impeachment essentially reopens the question of patentability, an experienced patent litigator is required. In some instances, a competitor to a patent holder may want to apply to the Federal Court to receive a declaration that its product or process does not infringe the patent. This declaration can be invaluable in allowing the competitor to compete with the patent holder free from the threat of pending litigation. Trade Marks As with patents, validity of a registered trade mark may be challenged by commencing expungement proceedings in the Federal Court, or by raising invalidity as a defence to infringement. A defendant may seek to invalidate a registered trade mark on the grounds of the mark not being registrable, non-distinctiveness, abandonment or, in certain instances, that the trade mark owner was not entitled to the registration of the trade mark. Also, after the third anniversary of its issuance, a registration is vulnerable to cancellation or amendment if it is not in use by way of summary expungement proceedings before the Registrar of Trade-marks. Copyright Special defences to copyright infringement include that the allegedly infringing use constituted a "fair dealing" under the Copyright Act. The "fair dealing" exemption permits reasonable copying of a work for limited purposes, such as private study and research, or criticism and review. Industrial Design The Industrial Design Act imposes strict marking requirements on articles protected by a registered design. Where a plaintiff did not properly mark its invention, that plaintiff is limited to injunctive relief against a defendant. In Your Court MO IPcan give you and your clients a full range of support in litigation matters. A wide variety of technical backgrounds in science, engineering, biotechnology, and computers, coupled with experience before federal and provincial courts and tribunals, ensures that your client will be well represented. Whether it's an expert opinion, assistance to counsel, negotiating a settlement or representation before the courts, our professionals can offer creative, practical and cost-effective service. Protecting Integrated Circuits In Canada, integrated circuits can be protected under three forms of intellectual property law. In recent years there has been significant progress in Canada and in several other countries, towards establishing specific statutory protection for integrated circuit designs which are expected to have increasing value in the future. This document will review the general protection available for integrated circuits under the relatively recently enacted Integrated Circuit Topography Act, as well as the additional protection available under Canadian patent and copyright laws. What is Integrated Circuit Topography Integrated circuits are miniaturized electronic devices in which a number of active and passive circuit elements are located on or within a continuous body of material to perform the function of a complete circuit. Integrated circuits have a distinctive physical circuit layout, which is first produced in the form of a large scale drawing and later reduced and reproduced in a solid medium by high precision electro chemical processes. The term "integrated circuit" is often used interchangeably with such terms as microchip, silicon chip, semiconductor chip, and micro-electronic device. The term "topography" describes a three-dimensional, layered "hill and valley" configuration which embodies the miniature electronic circuits of an integrated circuit. The layout of an integrated circuit will include one or more cross-sectional drawings which are superimposed upon each other and which together represent the complete integrated circuit or complete topography. A series of imaging, coating, etching and doping steps are required to produce a fabricated integrated circuit. The many coating and etching steps are carried out according to various layers of photographic images. Each successive image functions as a miniature stencil to define the design or pattern of each layer. These images are commonly referred to as integrated circuit "masks","mask works", or "topography". In Canada, the topography of integrated circuits is protected under the Integrated Circuit Topography Act. Exclusive Rights Granted Under the Topography Act, the owner of a registered topography has the exclusive right to reproduce, manufacture an integrated circuit product incorporating, and import or commercially exploit, that registered topography or any substantial portion of it. The owner of a registered topography also has the right to prevent a third party without authorization, from engaging in any of these activities. These exclusive rights are available to both creators and manufacturers of a topography, whether it is incorporated into a manufactured integrated circuit or not and whether the integrated circuit is in a final or intermediate form. What is Covered by the Act The Act protects the original design of a registered topography. The Act specifically protects integrated circuit topography, defined as the design of the disposition of any interconnections and the elements for the making of an integrated circuit product, or the disposition of any elements and the interconnections for the making of a customization layer or layers to be added to an integrated circuit product in an intermediate form. This explicit definition generally refers to the original three dimensional pattern embodied in an integrated circuit as discussed above. Since the Act refers to the term "topography" and not "mask work" as its U.S. counterpart does, the Act is not limited by any specific means of manufacture of an integrated circuit. For example, some newer methods of fabrication do not utilize masks, but rather manufacture integrated circuits using a method called "direct write" which involves the application of electronic beams (or other energy source) directly on the silicon substrate with layers of resist to create the desired integrated circuit design. What are the Registrability Requirements? For a topography to be registrable, it must be original and the applicant must comply with the Act's filing requirements. Further, the applicant must conform with certain creator residency/domicile requirements either in Canada or in a foreign country that, directly or through membership in an intergovernmental organization, provides certain protection of integrated circuit designs. It should be noted that these domicile requirements are not mandatory if a topography is first commercially exploited in Canada. An original topography according to the Act means that it is not merely a copy of all, or substantial part of another topography, and that it is the result of intellectual effort. The Act does not protect pre-existing topographies which are commonplace among integrated circuit topography designers or manufacturers. This originality requirement is stronger than the originality required under the Copyright Act, but weaker than that required under the Patent Act. What is the Term of Protection? The Act protects registered topographies for up to ten years. The term of protection in Canada commences on the filing date of the registration application and ends on December 31 of the tenth year after either the year of the first commercial exploitation or the year of the filing date, whichever is earlier. This term of protection is substantially shorter than the term available under the Patent and Copyright Acts. Finally, under the Act, applicants can enjoy a two year grace period following first commercial exploitation of the topography to file the mandatory application for registration. Infringement The Act attempts to balance the objective of protecting owners of integrated circuit design topography against piracy, with the objective of fostering an environment which promotes the development and exploitation of integrated circuit-related technology. Thus while the monopoly rights in a registered topography are infringed by a person who, without authorization from the owner, engages in any activity involving the exclusive rights granted under the Act, there are statutory exclusions to this rule. The exclusions allow a third party to copy a registered topography or to manufacture an integrated circuit incorporating that topography, to analyze or evaluate the topography or for research or teaching purposes. Further, a third party may perform acts corresponding to registrant's exclusive rights, which are carried out in connection with the creation of a second original topography, as a result of reverse engineering the registrant's topography. There is also a general exclusion for acts performed for private and non-commercial purposes. Remedies for Infringement The Act provides for a full range of civil remedies, including injunctions, damages and punitive damages. It also provides a defence to innocent infringers, who are dealing commercially with an infringing integrated circuit product, but are unaware, or have no reasonable grounds to believe, that it has been manufactured without authority. After notification of the infringement, their liability is limited to the payment of a reasonable royalty with respect to the disposal of integrated circuit products in inventory. Filing Requirements In order for a topography owner to have rights under the Act, they must register the topography at the Canadian Intellectual Property Office (CIPO). To register a topography, an applicant should obtain the appropriate forms from the CIPO, fill in the application with the required information and submit the completed forms to the Copyright and Industrial Design Branch of the CIPO. Required information includes the applicant's name and address, the title and nature of the topography, and the applicant's interest in the topography, i.e. whether the applicant is the creator, or a successor in title of the creator. The date of first commercial exploitation, if any, must be provided, including the day, month and year as well as the country in which the exploitation occurred. In addition, the applicant must submit a complete set of overlay sheets, drawings or photographs of the topography and a description of the nature or function of the topography. Under certain conditions, some confidential information can be omitted from the drawings or photographs of the topography. The Registrar of Topographies will not make a determination concerning a topography's originality or compliance with the requirements of the Act. Rather, the Registrar has authority to reject an application if the owner does not meet the nationality requirements, or if an application for an "exploited" topography is received more than two years after the date of first commercial exploitation anywhere. For applications concerning topographies containing confidential information, the regulations have special provisions. If part of the confidential information is to be obscured, then the topography must have more than two (2) layers. Under these circumstances, up to 50% of the total area of the sheets, photographs and drawings can be blocked out provided that the following conditions are met: (a) The selected sheets, drawings or photographs must be clearly indicated in the application; (b) the number of sheets, drawings and photographs selected must not exceed 50% of the total number of sheets, drawings, and photographs; and (c) the application must contain topographic design data in printed form for the areas that are blocked out. However, if four (4) or more integrated circuit products are deposited, up to 50% of these data may be blocked out. Finally, if the topography contains confidential information and has not been commercially exploited as of the data of filing the application, the application may instead contain: (a) the topography design data in printed form, of which up to 50% may be blocked out; and (b) a composite drawing or photograph of the topography, of which up to 50% may be blocked out. Additional Protection Under Patent Law While the Topography Act establishes a scheme for protecting integrated circuit layout designs which have solely functional or utilitarian features, it was not intended as a substitute for patent protection. The Topography Act confirms the co-existence of rights derived from other law with rights arising under the Act, except as otherwise provided by the Act. The exclusive rights granted under the Topography Act specifically exclude any rights relating to patentable subject matter such as ideas, concepts, processes, systems, techniques or information that may be contained in the topography of an integrated circuit. That is, the protection of the Topography Act does not extend to the patentable functions of an integrated circuit. Certain aspects of integrated circuit products may be patentable, for example the structure and method of operation of electronic circuit manifested in an integrated circuit, or the industrial processes used to manufacture integrated circuit products. These functional aspects may be eligible for additional protection under the Patent Act, separate and apart from the rights available under the Topography Act. Protection under the Patent Act can be much broader than the protection available under the Topography Act, and should generally be considered in addition to protection under the Topography Act. Additional Protection Under Copyright Law As a result of the Topography Act, the Copyright Act does not apply to integrated circuit topography and is further deemed to never have applied to this subject matter. In so providing, the Topography Act finally resolves prior uncertainty over whether Canadian copyright legislation provides protection for integrated circuit designs. However, it should be noted that the protection of an integrated circuit topography is a separate issue from the protection of the copyright and trade secrets (if applicable), present in the software that may be stored in an integrated circuit. Canadian copyright legislation can be used to protect the copyright in such software, and trade secret law can be used to protect software in some cases as industrial methods. The Topography Act clarifies the scope of protection under the Copyright Act, by stipulating that incorporating a computer program into an integrated circuit or incorporation of a work into such a computer program may amount to infringement of the copyright or moral rights in a work. Additional International Protection About twenty countries have explicit intellectual property protection for integrated circuits. Rights exist for Canadians in the U.S., Switzerland, Japan and Australia. Reciprocal protection agreements are currently being concluded between Canada and other countries, to provide protection for Canadian nationals and residents in countries which offer comparable protection to that available in Canada. The names of countries in which such reciprocal rights have been secured appear in notices in the Canada Gazette submitted by the Minister of Industry Canada. Owners of integrated circuit topographies should consider obtaining protection in other countries, especially where significant market opportunities are expected or where significant foreign competitors have manufacturing facilities. The Plant Breeders' Rights Act makes it possible for plant breeders to legally protect new varieties of sexually and asexually reproduced plants for a period of up to 18 years. All plant species, except algae, bacteria, and fungi, are eligible for protection. The owner of a new variety who receives a plant breeders' rights certificate has exclusive rights over the use of the variety, and will be able to protect the new variety from exploitation by others. Criteria A variety will be protected if it demonstrated that the variety is new, distinct, uniform and stable. The sale of the variety prior to filing the application is restricted. For instance, the variety cannot have been sold in Canada prior to submitting an application for protection. For sales outside Canada, the sale cannot have been made four years prior to filing an application, with the exception of vines, trees and rootstocks, which are given a six-year window of permitted sales outside of Canada prior to filing an application. A plant variety must be clearly distinguishable from other varieties that are being cultivated or exploited for commercial purposes in Canada and other varieties described in publications available to the public at the time of filing an application. Any variation in a plant variety should be predictable, capable of being described by the breeder, and commercially acceptable. Stable A variety must remain true to its description over repeated reproduction or multiplication. Rights of the Holder of a Plant Breeders' Right A holder of a plant breeders' right has the exclusive right to (a) sell, and produce the variety in Canada for the purpose of selling propagating material of the variety; (b) make repeated use of the variety for use in the production of ornamental plants or cut flowers; and (c) conditionally or unconditionally license a third party to do any of the above acts. A person who undertakes any of the above acts without authorization of the holder will infringe the holder's rights. The holder' rights are subject to two restrictions: (A) Protected varieties may be used to breed and develop new plant varieties. (B) Farmers may save and use their own seed of protected varieties. Who Can Apply For Plant Breeders' Rights Breeders, the breeder's employer, or the legal representative may be the Applicant. An Applicant must be a citizen of, or a resident, or have a registered office in, Canada or a member country of The International Union for the Protection of New Varieties of Plants (UPOV). A Canadian address to which correspondence may be sent is required on all applications. Residents outside of Canada must appoint an agent resident in Canada to submit an application on their behalf. Filing an Application The effective date of an application is when a completed application form including attachments and filing fee have been provided to the Plant Breeders' Rights Office (PBRO). The effective date will be used to determine the priority date of applications when varieties under examination are indistinguishable. The following information is to be provided to the PBRO: The following items are optional and must be requested by the Applicant at the time the application is filed: Protective Direction A protective direction protects a candidate variety for the time period extending from when the Applicant files an application and the date when plant breeders' rights are granted. Request for Exemption from Compulsory Licensing A compulsory licence may be granted to anyone who can demonstrate to the Commissioner that the holder of the right in respect of a particular variety has unreasonably refused to license them. An Applicant may request exemption from compulsory licensing and reasons for the exemption must be made at the time of application. Priority Claim An Applicant may claim priority based on an application previously filed in a UPOV member country. The filing date of the foreign application is considered the filing date in Canada. Priority must be claimed within one year from the date when the application was originally filed in the UPOV member country. A certified copy of the priority document translated into either French or English, must be submitted within 3 months after the claim for priority has been filed with the PBRO. Examination Examination of the variety is done to ensure that the requirements for distinctness, uniformity and stability are met. For examination, trials must be conducted in Canada to permit pair-wise comparisons between the candidate variety and reference varieties, and a site examination is required. As a general rule, asexually reproduced species require one growing season of trials while seed reproduced and woody species require two growing seasons of trials. It is possible to reduce the duration of the trials conducted in Canada from two years to one year, if foreign tests and trials from Plant Breeders' Rights Offices in UPVO member countries are accepted by the Canadian Office. Term of the Rights Plant Breeders' Rights are granted for a term of 18 years from the date of issue of the certificate. A holder may surrender the rights on the variety at any time during the term. Annual Renewal Fee A fee must be paid annually on the anniversary of the date the rights were granted in order for the rights to remain in force. Maintaining Propagating Material Throughout the term of protection, the holder of a plant breeders' right must be able to supply the Commissioner with a sample of propagating material of their variety. Samples of propagating material may be requested by the Commissioner at any time and the Commissioner may ask to inspect the facilities used for maintaining the variety. Revocation of Rights The Commissioner may revoke a holder's rights in the following circumstances: failure to pay the annual fee; A holder will have an opportunity to make representations before the Commissioner revokes rights. Annulment of Rights A holder's rights may be annulled when there is sufficient evidence that the variety was not distinct when the rights were granted, or the variety was sold prior to the date of the application in contravention of the Plant Breeders' Rights Act (Act) or Regulations. A holder will have an opportunity to make representations before a right is annulled. Assignment of Plant Breeders' Rights The holders of rights may assign their rights to another person. An assignment must be registered by the assignee with the PBRO within 30 days after the assignment occurred. Compulsory Licenses A compulsory licence may be granted where it can be demonstrated that the holder of the right has unreasonably refused to license the variety. Plant Varieties Journal A Plant Varieties Journal is published quarterly which contains information relating to plant breeders' rights. Interested persons may object to the particulars of the published applications/descriptions if they feel the requirements of the Act have not been met. Enforcement of Rights The holder of a plant breeder's right is responsible for bringing legal action against any infringements of the holder's rights. Proposed Changes to the Plant Breeders' Rights Legislation In 1992, Canada signed the 1991 UPOV Convention. In order to enable ratification, amendments are required to the Plant Breeders' Rights Legislation to bring it into conformity with the 1991 Convention. The proposed amendments include allowing a one-year period of sale of the variety in Canada prior to filing the application, reducing the period of time from four years to two years in which to furnish additional documents and material for which priority is claimed, providing automatic provisional protection for the variety prior to grant, broadening the scope of the holder's rights, extending the duration of the holder's rights, and providing additional circumstances where rights can be annulled or revoked. More details of the proposed amendments can be found on the Plant Breeders' Rights Office website |
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