Protect your intellectual property (IP) – especially if your livelihood is tied to it.
In Canada, there are four federal statues that govern intellectual property. Canadian Intellectual Property Office of Industry Canada administers them.
Let’s break them all down:
Patent Act
A patent works off a “first to file” system. The first applicant to file a patent application for an invention will be entitled to obtain patent protection.
A Canadian patent grants its owner the exclusive rights to make, use, and sell their invention in Canada, for 20 years from the date of the application.
A patent will only be granted for new inventions that are inventive, and useful. You can obtain a patent for devices, materials, processes and uses. You can also get a patent for marked improvements to an existing invention. You cannot get a patent for scientific principles, abstract theories or ideas or higher life forms, for example genetically modified animals.
In order to be considered new, an invention cannot be publicly available anywhere in the world.
For your invention to be classified as inventive, the differences between the original state and the inventive concept must require ingenuity. Meaning the new version required skill, knowledge or effort that required ingenuity to create. If a blue widget existed and you proposed a red widget, you would not get a patent based on your product being inventive. Your invention can’t be obvious to someone skilled in your specific industry.
Lastly, in order to meet the usefulness criteria, your invention must be functional and have a practical purpose.
To summarize, the government will give you the right to exclude others from producing, using or selling your invention for 20 years from the date the patent is granted, assuming you meet the criteria outlined.
Getting a patent is a complex and formal process in Canada, which is why it is recommend that you have a lawyer help you navigate the process and ensure every step is completed accurately and timely.
Protect Your Intellectual Property Internationally
International Patent Offices: Canada has signed agreements with 27 patent offices in the world. This program, known as the Patent Prosecution Highway (PPH), allows an applicant to expedite the examination of a patent application as long as there is a corresponding patent application with one of the other patent offices.
Trademarks Act
A trademark is defined as a word, symbol or design used to distinguish the goods or services of one person/organization from any others in the marketplace. For example, the Nike logo is trademarked and it used as a brand recognition tool for the company.
A trademark is different from a trade name, which is the name which you conduct your business under.
It is possible that a trademark registration may be declared invalid if the prior use of a trade name is very similar to your registered trademark. Using a lawyer to do a thorough search through existing trade names to ensure you won’t encounter a problem in the future.
Registered trademark versus unregistered
A registered trademark is one that is entered on the Trademarks Register. Most people don’t realize this, but you aren’t required to register your trademark. Using it for a certain amount of time will entitle you to common law ownership. However, it’s recommended that you formally register it. With a registered trademark, you have exclusive rights in Canada for 15 years. Your registration is renewable indefinitely with payment of the applicable administrative fees. There is no requirement to show current use of the trademark at the time of renewal.
Registered trademarks are only handled through the federal Trademarks Register, there are no provincial trademark registers.
In the event of a challenge to your ownership of a trademark, the challenger is responsible for proving ownership, not the registered party.
It is possible to cancel a registration with an administrative proceeding, if there no use of the trademark in association with the goods /services defined in your initial registration, for a period of three years. It is possible to dispute this if you can show special circumstances justifying non-use.
On June 17, 2019, Canada joined the Madrid Protocol and made changes to the Trademarks Act. The Madrid Protocol allows trademark owners to file a single application for international registration with the World Intellectual Property Organization (WIPO) and designate the member countries where protection is required/.
Copyright Act
A copyrighted work is an original literary, artistic, musical and/or dramatic work. Copyright typically lasts for the life of the author/creator plus an additional 50 years. You can stop someone else from reproducing your copyrighted work, which offers the protection you need to ensure your work isn’t devalued by unauthorized versions of it.
Registration your trademark has the following benefits:
- You have evidence that your copyrighted work is protected
- You can prove ownership if a dispute arises
- You have the ability to license or sell your copyrighted work to others
- It limits the ways others use your copyrighted work to protect the value of work
Most people don’t realize, but an original piece of work is generally protected by copyright automatically, the moment it is created. This is true for anyone living in Canada and extends to most other countries.
It is important to know that there are exceptions if the work is created as part of employment. In those cases, the employer owns the work product unless your employment contract states differently.
It is important to note that the copyright protects creation of ideas but not the ideas themselves.
Canada is a signatory to the Berne Convention; making copyright protection in Canada to works by American citizens or works first published in the United States.
Industrial Design Act
An industrial design covers the shape, configuration, pattern, or ornament of an object. Visual appeal and originality are the essence of industrial design.
Industrial design is different from the other forms of intellectual property, it requires the designs must be registered to benefit from legal protection and to own the exclusive rights to the design.
If your design has not been made public in any way, you can submit your application for registration at any time. If the work has been made public, you have 12 months from publication to file your application.
Industrial design protection provides the owner with exclusive rights to make, import, sell, or rent any aspect of the registered piece.
The Industrial Design Act gives you exclusive rights of use for 10 years from the date of registration or 15 years from the date of application, whichever is later. That is of course, subject to payment of maintenance fees.
To obtain your industrial design registration, there must be an original shape, pattern, or ornamentation applied to a manufactured article that is not a utilitarian function.
Intellectual property can be sold or transferred, it must be documented, and the new owner assumes the rights and protections. The Canadian Intellectual Property Office should be notified in these scenarios to ensure accurate and current registration information. Keeping the records current will also help in the event of an ownership disputes after the transfer of rights has taken place.
How Do You Police Your Intellectual Property?
Once you’ve set things up to protect your intellectual property, you do have to police your IP and ensure there is no infringement. In cases where the intellectual property assets become too large or complex, retaining the services of an agent in Canada who can perform the necessary intellectual property surveillance is a good idea. Your investment in policing your IP could very well save you significant time and expense down the road.
How Do You Enforce Your Intellectual Property Protection?
It is important to note that while the majority of Intellectual Property laws are the responsibility of the federal government, there is a scenario where the provincial government is involved. In the event of unauthorized use of a trademark (referred to as the law of passing off) falls within provincial jurisdiction. The law of passing off falls under both provincial and federal jurisdiction, as it is in the federal statute Trademarks Act.
Intellectual property owners and licensees can sue to enforce their rights in Canadian Courts. There are no specialized intellectual property courts in Canada. Federal Court has developed significant expertise in these matters.
Intellectual property actions generally have five main stages:
- Pleadings
- Documentary discovery
- Oral discovery
- Expert reports
- Trial
Summary judgment motions and trials may be filed in certain cases.
The remedies for intellectual property infringement are defined by federal statutes and common law. They include:
- Damages (patent, trademark, copyright)
- Accounting of profits (patent)
- Destruction of infringing goods (patent, trademark)
- Injunctions (patent, trademark, copyright)
- Legal costs.
Final judgments may be appealed to provincial or federal courts of appeal, appeals to the Supreme Court being available after that.
Navigating any of these areas requires knowledge and experience to ensure no detail slips through the cracks. Protect your intellectual property before it’s too late. CEO Law offers Patent and Trademark Registration Services, click here to learn more.
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