Lecture 6 Flashcards
what is a part of intellectual property?
- Patent
- Trademarks
- Copyrights
- Industrial Design
- Confidential Information, Trade Secret and Know-how
- Plant Breeder’s rights
- Integrated Circuit Topography
what is a part of IT but not protected by law and only by the civil code
confidential information, trade secret and know how
what is a patent
-An exclusive right given to an inventor (or its legal representative) for a
period of time in return for a complete disclosure of the invention,
provided other requirements form the Patent Act and Patent Rules are
satisfied
Patentability Criteria
– Novelty: like has it ever been disclosed if so then it can’t be patened anymore
– Utility
– Inventiveness (non-obviousness)
what is an invention
Any new and useful art, process, machine, manufacture or composition
of matter, or any new and useful improvement in any art, process,
machine, manufacture or composition of matter, that is novel, inventive
(non-obvious) and useful
can plans aka printed matters be patent
no
can scientific principles aka theorems be patents
no
can law of nature be patent
no
can mental steps be patents
no
Who is an inventor?
- Any person that contribute in an inventive manner to the invention
(intellectual contribution and initiative) - technician vs. inventor
- Employees represent the base of any company
(Know How / trade secret)
Why would one want a patent?
- For a technology that has a commercial potential
- To protect assets of a company
- To transfer the technology
- To find commercial partner, create joint venture
When should one apply for a patent?
- Before any disclosure, sale, signing a non-disclosure agreement and
even sending a manuscript for publication - As soon as you have preliminary data
Diligence
- Canada, Europe, Japan, internationally
*First-to-file system - United States
*First-inventor-to-file system since March 16, 2013… and before
*First-to-invent system
Publication for patents
- Canada, Europe, PCT and United States :
– Patent applications are laid-open to public inspection 18 months after
the earliest priority date or filing date - Exceptions:
– US Patent applications filed before Nov. 29, 2000; and
– Canadian patent applications filed before October 1st, 1989; These
applications remain confidential until the grant of the patent
Term of a patent
- Protection only starts at the grant of the patent and ends 20 years after
the filing date of the application - Caution: US patent may be subjected to a Patent term adjustment
causing an extension of the 20-year term (see US9339277)
Filing Strategy
- Patentability Search
- Filing of a first application in the United States
- Filing of an international (PCT) application claiming priority of the first
filed US application within 12 months of the first filed application (allows
to differ costs for translation among other advantages)
Patent Search
- To confirm or verify patentability of the invention
- To prevent duplication of invention
- To better describe the state of the art
- To identify new products / solutions
- To generate new ideas for research
- To avoid infringement
Infringement
- Use, purchase, making, sale and importation of a patented invention in
Canada, without the Patentee’s authorization - Generally to guard against infringing someone else’s rights, a Freedomto-operate search and opinion should preferably be conducted before
any commercialization
Validity
- A patent is granted with a presumption of validity, until otherwise proven
What is a Patent agent?
- Takes care of protecting inventions
- Has a technical background
- Is highly qualified (exams to pass)
- No school or class but only other patent agents to learn from
Area of practice of patent agents
- Drafting applications
- Prosecuting applications
- Advising client on strategy for protecting inventions
- Providing patentability, infringement, validity and freedom-to-operate
opinions - Worldwide practice
- Diversified area of practice
