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Intellectual Property in Canada

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Sas Tullo

on 16 November 2015

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Transcript of Intellectual Property in Canada

Intellectual Property in Canada

Sas Ansari
Osgoode Hall Law School
Class 8 - Law and Governance in Engineering

Overview of Class
Principles and Policy of IP (Prof Carys Craig)
IP vs Other Property
Sources of IP Law
Industrial Design
Trade Secrets
International Law Aspects

Copyright Act
protects copyright, moral rights, and the rights of performers, makers of sound recordings and broadcasters.

The (purported) aim of copyright is to encourage and reward authors or original literary, dramatic, musical, and artistic works,
to protect the rights of users and consumers of such work

Moral rights protect the creators honour and reputation against prejudice, and the right to (not) be associated with it.

To have copyright, an author need not register - protection is given at common law, so long as the requirements of copyright protection are met.

Patent Act
protects the rights of Inventors in their Inventions - the idea and the expression of the idea.

Patent rights arise only on filing and appoval by the government.

A patent grants a monopoly for a limited time and is meant to encourage the dislcoure of useful inventions.
the scope of protection is defined by the "claims" in the patent

Patents protect against independent creation - ne need to prove access
Trade-marks Act
protects the use of trademarks in association with specified products or services:

To protect the good will or reputation assocaited with the particular business
To prevent confusion in the market place

Both registered and unregistered trade-marks are protected, but rights of registered marks are more extensive.
IP vs Other Property
Usually when we think of property, we think of land, buildings, furnishings, machinery, equipment - physical objects themselves.

Intellectual Property - IP - is a label for a number of different bundles of rights that protect interests in products of the mind.

literary and artistic works
symbols and shapes
names and images

More obviously than other property rights, IP balance the rights of the creator/inventor and the public interest.
Most Common Types of IP for Engineers
- protect "inventions"
- protects literary, musical, artistic, or dramatic works
- protects the good will and reputation associated with goods or services
Industrial Design
- protects ornaments, shapes, configurations, patterns
Trade Secrets
- protects a variety of secrets important to business
The patent application process involves:

Filing - Search - Examination - Response or amedment - Notice of allowance of rejection - payment of issue fee or appeal

To be patentable:

the invention must refer to a manner of new manufacture - products, process, method
it must be new or novel - compared to previously dislocused devises or process in the same filed
it must be unobvious - some inventive ingenuity
it must have some utility - useful for its intended purpose

What is NOT patentable:

Professional skills and their application, or methods of medical treatment
Sceintific Principles
Abstract Theorems
Monopoly Rights Granted by Patents
The owner of the patent is the person who applies for the patent first and:

is the person who invents the invention
if an employee then the employer is the owner if the invention is a normal invident of the employees employment

The owner of the patent has the sole right to exploit the caims in the patent for the term of the patent (20 years).
Why have IP?
IP starts from the premise that ideas are the common resource of all, but then undermines this principle by restricting use.

Rooted in a number of justifications:
The private ownership of the fruits of one's mind
Business's need to protect reputation/protect consumers
Protection provides an incentive for people to share knowledge and advances
Reward for producing something useful for society
Without IP research and work would not be financed by capitalists

Canada's copyright, patent, trade-mark and industrial design laws can be traced to laws before 1867 - at confederation the need to protect IP was already seen as self-evident.

This view is highly Eurocentric (and individualistic) and is not universally shared by other traditions and cultures.
"Intellectual" - "Property" ?
What is now called "property" used to be called a "privilege" but the language changed after the enlightenment and the industrial revolution.

IP is not like physical property - if someone takes your physical property you left without it - someone takes you idea, you still have it.

Capitalists and creatives wanted to own what they produced - including ideas, schemes, goodwill, etc - to stop others from enjoying for free and from competing with them.
Although some of the rights are concerned with creations of the mind - not all things that fall under IP are "Intellectual".

For example:
trade-mark protection does not require some new addition to knowledge or some new creation.
moral rights of the author tie to mere authorship
Sources of IP Law in Canada
Most of the rights we think of when referring to IP are found in Federal Legislation:

Patents -
Patent Act
RSC 1985 c P-4
Copyright -
Copyright Act
RSC 1985 c C-42
Trade-marks -
Trade-marks Act
, RSC 1985 c T-13
Industrial Designs -
Industrial Designs Act
RSC 1985 c I-9

International treaties, when incorporated into Canadian law are also sources of law directly or (even when not incorporated into Canadian law) provide guidance for interpreting Canadian law and developing it. Some common Canadian treaties are:

The Paris Convention for the Protection of Industrial Property
The Berne Convention for the Protection of Literary and Artistic Works
Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations
North American Free Trade Agreement
Agreement on Trade-Related Aspects of Intellectual Propert

Common Features of IP
IP rights are strongly territorial, with international components
Internationally, treaties dictate to some extent what nations have to put in legislation
But a Canadian right is effective in Canada only and no foreign rights apply in Canada

Overlapping and Multiple Rights
IP rights are intangible and distinct from rights to tangible objects to which the IP relates, and the same thing can attract more than one IP right

Trade-marks, business names, trade secrets and confidences, and copyrights are protected without registration
Patents and industrial designs only exist when registered
Trade-marks, business names, and copyrights can be registered (to get wider protection).

Marking Optional
Unlike the USA, marking with a notion to indicate protection is not mandatory in Canada (but is legally useful)

Constitutional Issues
Some right that protect IP (eg.passing off, breach of confidence) are under provincial jurisdiction, while most IP comes under Federal jurisdiciton
Criteria to Get Copyright
To obtain protection of copyright:

The work has to be ORIGINAL - not that the work is new or creative, but that it comes from the author, is not copied, and involves some minimal intellectual effort (selection, judgment, and experience)
The work has to be created - can't get copyright in a future work - and physically fixed (some material existence, other than perforamnces)
The work has to be literary, dramatic, musical, artistic or a performance, sound recording, or communication signal

The person who gets copyright is:

is the author of the work - a question of fact
for engravings, photographs, and portraits the owner is the person who ordered the work to be made
if made in the course of employment, the owner is the employer not employee

What is NOT subject to Copyright

Facts and Ideas are not subject to copyright
Only items originating from the author are protecteed, underlying materials is not
Words are not subject to copyright
Generally a title alone is not enough of a composition to get protection
Functional components are not protected

Monopoly Rights Granted by Copyright
The copyright holder has the sole right to do certain things, which may be assigned, granted, or licensed to others:

Right to Reproduce
the whole or a substantial part of the work in any material form
Right to Performance in Public

Right to make contrivances
for mechanical performance or delivery

Some rights protected are not copyright:

Right to sound recordings
of the maker of the recording to publication, reproduction and rental
Performers' Rights
to live performances of works, in addition to copyright rights, to further reproduction
Broadcaster's right
to broadcast signals to fix, reproduce, or retransmit the signal

Term of Protection

Usually, 50 years after the death of the author (or last surviving author)
Photographs, sound recordings, boradcast signals, and cinematographic works (without dramatic character) - 50 years after the end of year of making
A person infrignes another's copyright by doing anything that only the owner of copyright has the right to do.

There are a few defences provided by the Act include:

Fair dealing for purpose of reserach and private stury, criticism or review, reporting or news sumary
Educational Insitutions for classroom disply or rexaminaiton, student performances, remporary copy of news programing for instructions
Non-profit performances of musical works, etc at agricultural fairs
Criteria for Getting Patent Protection
Infringement occurs when a person takes either the letter of the invention or the substance of the invention.

One has to look at the claims in a patent to figure out what the core substance of the invention is - one can only look in the patent not outside documents

Defence (s 56)
"Every person who, before hte claim date o a claim in a patent has purchased, constructed or acquired the subject matter defined in the claim, has the right to use and sell to others the specific article, machine, manufactur, composition of matter ..."
Criteria for Getting Trade-mark Protection
The basis for trade-mark is distinctiveness:

The marks and the product/services are associated
The owner uses the association between the mark and the product/services
The association enables the owner to distinguish product/service from that of others

Trade-mark is invalid if it:

was not registarable at time of registration
is not distinctive at time of proceedings
is abandoned
person who obtained registration was not entitled to it
does not distinguish the products/services
is common to the trade or merely descriptive
is functional or a charactertistic
An official or prohibited mark (used by public authority in Canada)
Monopoly Rights Protected by Trade
The owner of the trade-mark has the exclusive right to use (or license for use) the mark in association with the particular products(s)/services(s) throughout Canada

Tort of Passing off:

Existence of good will
deceptive oto the public due to misrepresentation
actual or potential damage to the plaintiff

Industrial Designs
Industrial Design Act
protects industrial designs - freatures of shapes, configurations, patterns or ornaments that are applied to or part of finished products whose effect is on the eye.

Cannot get protection for:

functional designs
Methods of construction
Materils used in construciton of articles

To get protection the shapes, configurations, patterns or ornaments must be novel and orginal.
Criteria for Getting Protection
Protection is only granted on registration and protection is given to:

The owner of the design
Where an employee is the designer, then the employer of the designer

Protectionis given for a 10 year term, after which anyone is free to make, import, rent or sell the design in Canada

Registration can only be made before publication of the design or within 12 months of publicaion
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