Ch.26 Intellectual Property, Patents, Trademarks, Copyright, and Franchising Flashcards
Patent
exclusive right granted to the inventor of something new and different to produce the invention for a period of 20 years in return for the disclosure of the invention to the public
Industrial property - encourage new inventions
Industrial property
encourage new inventions
Trademark
a mark to distinguish the goods or services of one person from the goods or services of others
Protect marks and prevent unauthorized use
Copyright
right of ownership of an original literary or artistic work and the control over the right to copy it
Encourage literary and artistic endeavours and protect such works from copying or use without authorization
Industrial design
right to produce in quantity some artistic work
Fourth form of protection
Bridging trademarks and copyrights
Trade secret
commercial secret regarding a product or process
Employees held accountable to keep secret
Examples: “secret” sauce, soft drink recipes or processing techniques
Non-disclosure agreements (NDA)
contract to maintain a trade secret
Used for employees, potential partners, suppliers, and customers
Business negotiations
The Patent Act
Patents apply to inventions which are:
New - not invented before
Useful - not a mere idea, actually works and can be reproduced by someone “skilled in the art”
Unobvious - not next logical step
Four classes;
- Machine (multiple interactive parts)
- Process (method of manufacture / achieving result)
- An article of manufacture (useful device)
- Composition of material (a formulation)
Application for patent:
Can be made by inventor or inventor’s agent
In Canada - first to file owns the invention
- USA - first to invent system
- USA - first to file also (New Act 09/2011)
Patent agents:
Assist in preparation of documents and processing of the patent
Lawyers who specialize in patent work skilled in assessment of inventions
Search:
Canadian intellectual Property Office and/or U.S. Patent Office - search for any similar patents
Any patents already issued that cover part or all of invention make invention not patentable
Application:
If invention is open, inventor submits application
Includes petition for patent and detailed specifications, drawings, and claims being made
Must pay patent-filing fee and short abstract of disclosure written in simple language
Claim:
Most important document is specifications and claims statement
- Describes invention in detail and what is new and useful
- Describes uses of invention and why inventor entitled to patent
- Inventor cannot leave out parts of the invention i.e. must be accurate, or patent may be void
- Accompanying abstract is brief synopsis of detailed submission written in non-technical language
Examination and Issue:
Canadian Intellectual Property Office examines application to determine if infringes on existing patent
Protection is from date of application but no protection until patent is granted
“Patent pending” a notice to others that a patent has been applied for and warning of possible infringement
Patent is for 20 years from date of application
Foreign Patent Protection
Paris Convention (1883):
Treaty whereby signatory states recognize patents in other member states
Inventor has 12 months from date of application in home country to file for application (and protection) in other countries who are members of treaty
Filing date in foreign country is same filing date as the first filing date in home country
Compulsory license
directive by the Commissioner of Patents requiring patentee to license others to produce a product for the general benefit of the public
- In return for monopoly of patent, patentee must “work” the invention to meet public demand
- May arise when work of patent is dependent upon right to produce a part covered by an earlier patent
- If patentee fails to “work” a patent or price is unreasonably high, then any interested party may apply for a license
Infringement
def: unlawful interference with the legal rights of another
Using a patent without authorization
Entitles patentee to take legal action against unauthorized producer, user, or seller
Includes unauthorized production, importation of product or any working of patent without consent or payment of royalties
Remedies (for infringement):
- Money damages, injunction and accounting for all profits made
Trademarks
Marks used to distinguish and identify one’s goods or services
- Includes trademarks and trade names
- Protection of goodwill and preventing passing off
Trademarks Historical development:
Long history dating back to Babylon
Various amendments in Canada over the years
Now includes certification marks and importation of trademarked goods
Trademarks Act
Federal statute:
Governs use of trademarks and trade names
Defines trademarks and maintains register of marks at Canadian Intellectual Property Office
Protection under the Act provided by registration
Marks can be registered which are not:
Descriptive o In use by another prior user
Confusing with existing marks
Contrary to public interest
Types of marks that can be registered:
Service marks
Certification (“quality”) marks
Distinctive guise
Trade name
Sound mark
Non-traditional marks
Service marks
used by service industries
Certification (“quality”) marks
used to distinguish goods or services of a certain quality
Distinctive guise
trademark with particular shape, used to distinguish it from products of others
Trade name
name chosen to describe a business
Sound mark
sound of distinctive character
Non-traditional marks
colours, scents, holograms and animations may be distinguishing
Requirements to be registrable under the Act:
Distinctive
Not confusing with marks already in existence
Used in public
Prohibitive marks:
Royalty or government related
Famous or well-known living person (or person died within last 30 years)
Offensive symbols
Enforcement Remedies
Civil
Damages
Injunction
Accounting for all profits
Enforcement Remedies
Criminal
For forgery
Passing off
Loss of Mark
Mark not used; or
Generic
- Name so successful becomes generic such as zipper or linoleum
Foreign Trade Marks
Same as patents under international conventions
Franchise
business relationship that licenses the use of trade names, trademarks, and operating procedures to operate a similar business \
Governed by contract and in some provinces by statute
Franchisor grants franchisee license to use the trade name and trademarks of the franchisor’s products and services
Agreement usually contains upfront payments and royalties from profits
Copyright
Law pertaining to copyright concerned with:
“Right to copy” and the control of it
Recognizes rights of original creator to control reproduction of work
Covers all writing (books, articles, poems) as well as written work (musical compositions, choreography, live performances, etc.)
Covers artistic work like sculpture, paintings, photographs, video recordings, etc
The Copyright Act
Sole right to publish to publish or reproduce an original work is the original author
Term in Canada - lifetime of the author plus 50 years copyright period (U.S. is 70 years)
Registration not required for protection but acts as notice to public
Protects arrangement of words or expression but not underlying idea or subject matter
Takes form of registration of work and marking with symbol © (+date+owner)
Copyright can be assigned, in whole or part
Infringement
Unauthorized copying of protected work i.e. copying, distribution, publishing, etc. without permission
- Exceptions with “fair dealing” for private study, research, criticism, review, etc.
Infringement remedies
Damages
Injunction
Accounting for lost profits
Moral rights
author has right to have his or name associated with the work i.e. “right to the integrity of the work”
Includes right to:
- Have name associated with the work
- Have pseudonym or remain anonymous
- Action if distortion or mutilation of work prejudices honor or reputation of the author
Plagiarism
taking of copyrighted work of one person by another
Digital Copyright Protection and Infringement
Cutting, pasting and/or downloading from a website without permission is an infringement of copyright
- Can be done only with permission of copyright holder or agent and only within terms of royalty agreement
- Some Web content is exempt and can be freely duplicated
- Policing illegal downloads is challenging for music industry due to user anonymity
Performing-Rights Societies and Collective Societies
Obtain performing rights to musical and dramatic works
- Grant performing licenses for a fee to organizations that want to perform works (e.g. play or musical)
- Fees collected paid in part to copyright owner and balance covers operating expenses
- Fee schedules are published and filed with Copyright Board
License Agreements
Licensing of intellectual property (IP) is common means to commercialization
Owner of intellectual property grants license in return for payment of royalty
- Example: Disney product merchandising
License is for specific and narrowly defined use, time frame and includes any geographical or limitations appropriate to the compensation and negotiated use
Requires minimum investment in time and expertise on part of licensor
