AFM231 Chapter Notes - Chapter 18: Canadian Intellectual Property Office, Patent Infringement, Trademark Infringement
18 May 2018
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AFM 231 – Chapter 18: Intellectual Property
• Intellectual property: the results of creative process, such as ideas, the expression of ideas,
formulas, schemes, trademarks and also refers to the protection of the idea through patent,
copyrights, trademark, etc.
• Examples of Intellectual Property
o Recipes and formulas for making products
o Manufacturing processes
o Advertising and marketing plans
o Distinctive name given to a product/service
• Intellectual Property can be used to describe the rights people have regarding their ideas
• Main categories of intellectual property laws
o Patents
o Trademarks
o Copyrights
o Industrial design
o Confidential (business) information
Patents
• Patent: monopoly to make, use or sell an invention
• It is a statutory right the provides protection for inventions
• Patent Act defines an invention as any new and useful art, process, machine, manufacture
or composition of matter or any new and useful improvement
• Exclusions from Patent Protection
o Things that receive protection under other areas of law
▪ i.e. computer programs and software are not patentable because they get
protection under copyright law
▪ can get patent protection as part of a broader patent such as a computerized
method of controlling operations
o things that do not meet the definition of a patent
▪ i.e. scientific theorems are discoveries and not an invention so they are not
patentable
▪ a practical application of a theory can qualify for protection
o things that are, for a policy reasons not patentable
▪ methods of medical/surgical treatment, business methods such as
franchising arrangements and accounting methods are not patentable
▪ the Canadian Intellectual Property Office states that business methods are
not automatically excluded from patent protection and some business
methods can be patentable
• Requirements for Patentability
o New
▪ It is new if it has not been disclosed publicly
▪ Any public disclosure, public use, or sale of the invention prior to filling for a
patent is considered to an old invention and so unpatentable
▪ If the inventor makes a disclosure within the year preceding the filing of the
application, it will not be considered public disclosure (so one year grace
period)
o Useful
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▪ The invention must solve some practical problem and it must actually work
rather than being just a scientific curiosity
▪ Invention must have industrial value, but it need not be commercially
successful
o Unobvious
▪ Must be inventiveness: must have some creativity or inventive step involved
in the invention
▪ i.e. just using a different material for making a product is not patentable
since there is no inventive step
▪ can ask someone knowledgeable in the field the invention is being made in
to determine if the invention is unobvious
▪ patent agent: a professional trained in patent law and can help with
determining if an invention is new and if the invention is obvious
• Patent Protection and Application
o An application for a patent must be filled with the Canadian Intellectual Property
Office
o Since patents are given based on first to file system, timing of application is
important
o Generally the inventor is the first owner of the invention and so the person entitled
to apply for a patent
o Patent Act does not have specific rules on ownership of inventions created by
employees in the course of employment, but usually an employee will be the owner
unless
▪ The employee was specifically hired to produce the invention and makes the
invention in the course of employment
▪ There is an express or implied agreement that precludes the employee from
claiming ownership of inventions relating to and developed in the course of
employment
o Employers should consider if the employment contract addresses the ownership of
all intellectual property including inventions produced in the course of employment
o Preparing for a patent application is very complex and usually done by a patent
agent with the expertise in the particular area
o Application has 2 main parts
▪ Specifications: describes how to product is made or the best way to perform
the process/method
• Tells reader how to put the invention into practice after the patent
expires
▪ Claims: defines the exclusive rights enjoyed by the patent holder
• Tells reader what they cannot do before the expiry of the patent
o Application examined by Canadian Intellectual Property Office to ensure that the
invention has not been already invented and that the application complies with the
Patent Act
o If application is successful, once the required fee is paid a patent is issued
o Though it is not mandatory, the word patented and the patent number can be put
on the manufactured goods so that it notifies others of the existence of a right and
can reduce the number of innocent infringements on the patent
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o Some manufactures put the term patent pending or patent applied for on
products which warns others that a patent may eventually be issued so they could
be liable to pay damages for infringing the patent once the patent is granted
o Patent gives inventor right to exclude others from making, selling or using the
invention which has a patent for 20 years from the date of filling the application as
long at the appropriate maintenance fees are paid
o Patents are national so they exist only in the country in which the applications are
made and granted
Copyright
• Copyright: right to prevent others from copying or modifying certain work
• It is governed by the Copyright Act
• Subject to certain exemptions, only the author (or owner of the copyright) has the right to
copy a work
• Copyright does not protect the author’s underlying ideas/facts
o i.e. no one has copyright over the life story of Ken Thomson, but once a story is
written, copyright resides in the expression of that particular written work about
the life story
• copyright applies to every original literary, dramatic, musical and artistic work and to
traditional and non traditional works (i.e. sounds recordings, broadcasts)
• items not protected: facts, names, slogans, short phrases and most titles
• businesses can obtain copyrights for things such as computer programs, manuals,
advertising copy, etc.
• Requirements for Protection: Work must meet requirements of
o Originality: work must originate from author and not copied from another and
involves the exercise of skill and judgement
o Fixation: work must be expressed in some fixed form (i.e. paper)
▪ i.e. speeches and interviews are not in fixed form so cant get copyrights
▪ function: provides a means of comparison for judging whether a copyright
has been infringed
• Registration Process and Protection
o Copyright protections arises automatically on the creation of work
o There is an optional registration process which is beneficial because it provides
presumption of ownership
o The owner of copyright can mark the work, but they are not required to do to
enforce copyright. But the mark can enhance the protection of the work
o Under Copyright Act, the author of the work is the copyright owner unless there is
an agreement to the contraty
▪ i.e. major excpetion: work created in the course of employment so the
employer is owner
o general protection of copy right: life of author plus 50 years
• Rights under Copyright
o Below are sample rights:
o Reproduction: right to reproduce the work
o Public performance: right to perform the work
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