11. Intellectual Property and Business Law Flashcards
What are the different types of IP
- Patents
- Industrial designs
- Copyrights
- Trademarks
- Trade secrets
What do patents cover?
New and useful inventions or any new innovations to an existing invention
it can cover: a product, composition, a machine, a process, and an improvement to any of these
What is a patent
Document issued by the government that grants the right of exclusion to an inventor for a given period in exchange for a complete description of the invention
a patent does not give the right to use an invention
What are industrial designs
Visual features of shape, configuration, pattern or ornament , or any combination of these features applied to a finished article
What are copyrights
The exclusive right to produce, reproduce, publish, or perform an original work
Provides protection for literary, artistic, dramatic or musical works and other subject matter known as performers performances, sound recordings, and communication signals
What is a trademark?
Sign or combination of signs used to distinguish the goods/services of one person/org from others
What is a few examples of what trademarks include
Moving image, texture, sounds, positioning of sign
What are word marks and design marks in TM?
Word marks are like : The second cup, or starbucks and design marks are like the mermaid for starbucks
What are trade secrets and what does a business need to do protect and benefit from it?
any valuable business info that derives its value from secrecy
To protect and benefit from trade secrets a business must:
obtain value from the secret, keep the info secret, and take all measures to ensure the info remains a secret
What is identifiable IP
- Tech that youre using or selling
- Brand names/logos
- Any works youre currently using (logos, slogans, pictures…)
How to protected identifiable IP
- Patents/ patent applications
- industrial designs/industrial applications
- registered TM/ TM applications
- Unregistered TM
- Copyrighted works
- Trade secrets
What’s the importance of protecting IP
- Can add value to product and business
- Can obtain licensing agreements from competitors
- Can prevent a competitor from commercializing your product/tech
What is important to consider when identifying and protecting IP
- Registration of IP rights
- Ownership/assignment of IP created by employees
- Ownership/assignment of IP created by independent contractors
- Duty of loyalty/confidentiality
What are the rules for registration of IP rights
Some IP rights are only enforceable in Canada
Registration of IP rights gives national IP rights
What are the registration rules for the different types of IP
Patents/industrial designs: file a patent or industrial design application
TM: can choose to file a trademark application
copyrights: registration not needed in Canada
Trade secrets no registration
What to consider when registering IP rights
Filing: the cost of filing/registering/maintaining a patent/TM/industrial design compared to the value gained
Registered vs unregistered TM–> unregistered would require proof of goodwill and is limited to geographic region
Patent vs trade secrets
Patents: lasts 20 yrs from filing date, Can be difficult and or expensive to obtain and maintain
Trade secrets: can last indefinitely (until secret is revealed) info must be kept secret (which can be difficult/costly)
What is the ownership/assignment of IP created by the employee
Copyright: owner is presumed to be the employer if work was made in the course of employment, unless there’s an agreement stating the contrary
Patents: owner is presumed to be the the employee unless there’s a contract stating otherwise or the employee was specifically hired to invent or innovate
What is the ownership/assignment of IP created by an independent contractor
For Copyrights and patents: owner is presumed to be the inventor/author, or the company where theyre employed, unless agreed otherwise
What is the assignment clause
has the definition of IP, specifically mentions who owns IP created by 3rd party or employee, waiver of moral rights
ensure assignment is signed and in writing
What is the duty of loyalty/confidentiality?
obligation of confidentiality and loyalty of the employee
can be specified by contract
CCQ: The employee is bound not only to perform his work with prudence and diligence, but also to act faithfully and honestly and not use any confidential information he obtains in the performance or in the course of his work. These obligations continue for a reasonable time after the contract terminates and permanently where the information concerns the reputation and privacy of others.
To comply with the CCQ the employee must…
Respect the confidentiality of certain information belonging to the employer and Not appropriate the material or IP of the employer
Role of duty of loyalty/confidentiality with 3rd parties
- Sale, acquisition, merger, and restructuring discussions
- Negotiation of IP licenses
- R &D
- Contractors
- Suppliers, manufacturers
- External consultants
Article 2088 of the CCQ does not apply
what are the Contractual clauses for Trade secrets
- Definition of “Confidential Information”
- Obligation of non-disclosure and non-use
- Definition of “permitted uses”
- Undertaking not to use / disclose confidential information of third parties (ex: former employer)
- Data destruction/return of documents
- Obligation to report if information was inadvertently transmitted
- Penal clause (articles 1622 and 1623 of the Civil Code)
What are remedies for 3rd party infringement
- Injunction
- Damages
- Accounting of profits
- Punitive Damages
- Delivery/seizure and destruction of property
What are some services to consider with 3rd party infringement, essentially how to avoid it
Freedom to operate search/ Infringement opinion
Trademark search and opinion
