© 2019 by JZC Intellectual Property Law

What is Intellectual Property (IP)?

 

Below are some of the common types of intellectual property that can protect your creations. For further information on content on this page, please contact Jerry.

 

Patents

 

Patents protect new and useful inventions – this includes both products and processes. To obtain a patent, you must file a patent application with the Canadian Intellectual Property Office (CIPO). Once granted, a patent grants you an exclusive right to the invention for a period of 20 years from when you filed the application.

However, not all inventions are patentable. For example, you cannot patent general concepts, facts or calculations. There are also various obstacles to obtaining patents on abstract inventions such as software applications.

 

Have you already disclosed or sold your invention? If so, you may no longer be able to get a patent. Patents are granted for invention that are new and have not been disclosed to the public. In Canada and the United States, you must file a patent within one year after you have disclosed the invention to the public anywhere. This is called a grace period. For many other countries, the grace period is much shorter. For example, in China, Hong Kong, Japan, Korea and many European countries, this grace period is six months, and come with a number of limitations on the type of disclosure (e.g., government approved conventions). In some other countries, there is no grace period at all - if you’ve sold or otherwise disclosed your invention anywhere, it is no longer patentable in that country. Of course, if the invention or product has been disclosed or sold by someone else, you will also most likely not be able to obtain a patent on it.

 

If you believe that you may be close to the end of the grace period, please speak to a patent lawyer or agent as soon as possible.

 

Also note that patent rights are local – a patent in one country will not protect your invention in another country. It is best to consult with your patent lawyer or agent at the outset to discuss all potential markets before filing a patent application.

 

Patents are typically the most expensive form of intellectual property to obtain, but if protecting a new product or process from being copied by competitors is important to your business, then patents should be strongly considered.

 

Trademarks

Trademarks protect a company’s brand – this may include the company or product name, logo, slogan or even sound recording.

In Canada, you can apply for a trademark registration to protect your brand across Canada. However, unregistered trademarks that have been used are also entitled to some protection.

 

Unregistered trademarks rights may be protected if you can show that 1) you have used the mark over a period of time; and that 2) the mark has gained sufficient goodwill or reputation. However, the unregistered trademark will only be entitled to protection where the mark has been used.

 

On the other hand, trademarks registrations provide rights across Canada for 15 years, and are renewable indefinitely.

There are two markings commonly associated with trademarks:

TM = trademark (may be registered or unregistered)

® = registered trademark

 

In Canada, unregistered foreign trademarks have very limited protection – the foreign trademark owner will need to prove that there has been spill-over advertising from their original country, or that they have provided or offered services or sold goods to Canadians.

Trademark registrations are relatively inexpensive and can be applied for without having prior use, and are highly recommended for foreign businesses that have plans on eventually doing business in Canada. Without a registration, others may be able to adopt the mark, thus preventing your use and registration of the mark in Canada.

 

Copyright

Copyright protects original creative works, such as photographs, paintings, printed materials, and sound recordings from being copied. The original copyright owner has the sole right to produce or reproduce a work, and this includes the right to perform the work. Note that information or facts are not copyrightable, but the specific way that facts are expressed may be.  

In Canada, there is no need to register a copyright to obtain protection. However, registration is beneficial in that it proves ownership, and entitles the copyright owner to better remedies against infringers. Copyright registration are also relatively inexpensive – currently $50 if filed online, and will provide you with a certificate of registration.

Regardless of registration, copyright in Canada lasts for 50 years after the death of the author.

Qualifying copyrighted works may be protected under international treaty, the Berne Convention. This means that your copyrighted work may be protected in another country, if that country is part of the treaty.

 

Industrial Designs

Industrial designs protect the look and features of a product that appeal to the eye. This could include the pattern or shape which give the products a distinctive or competitive edge. To be registrable, the design must be original and cannot resemble an existing design.

 

Registering an industrial design provides protection for the design for a period of up to 10 years.

Similar to patents, if you have already disclosed the design, for example by selling the product, you will have a grace period of one year to file for the registration in Canada. Also, if the design has been disclosed by someone else, you will no longer be able to register the design. For this reason, it is recommended that you register your design as early as possible.

 

Trade Secrets

 

Trade secrets protect business information that derive their value from secrecy. This includes information that you may not want to disclose by filing a patent application. For example, a trade secret may be a secret recipe that would lose most of its value if it were disclosed, and would have limited value as a patent due to the difficulties in monitoring and enforcing the patent (not to mention obtaining the patent).

 

However, if a trade secret is leaked or published anywhere, then it is no longer a trade secret! It is the responsibility of the trade secret owner to protect the secrecy of the trade secret. Typical measures used to protect trade secrets include internal security measures and confidentiality agreements. There is no registration process for trade secrets.