Protecting Your Intellectual Property Clear Sailing or Rough

Rapids?

THOMPSON & ASSOCIATESPATENT AND TRADEMARK LAWYERS

Presented by:

Test the waters

Know what you’re getting in to:

• Has it been done before? • How difficult is it to obtain protection?• Is there a market?

Don’t miss the boat

Be aware of the time limits that must be met

• First-to-file systems• Public disclosure deadlines

Don’t go up the creek without a paddle

• You may be limited to what you file with, make sure it’s what you want

Take a guide

• A qualified professional will be able to help smooth the ride and make informed decisions

Types of Intellectual Property:

• Patents• Trademark• Designs• Copyright

• Others:• Trade Secrets

• Plant Breeders’ Rights

• Integrated Circuit Topography

• Domain Names

Comparison of Main Types

Copyright

Industrial Design TrademarkPatent

Patents

• Protects: new processes, machines, arts, manufactures or compositions of matter

• Quid pro quo: share your invention publicly in exchange for a 20 year monopoly

Patents

• New • Has anyone done something similar before? • Has the invention been publicly disclosed?

• Useful • Does it work? • Are all necessary parts described?

• Not obvious • Is there some “inventive step” over what is

already known?

Patents

• 1. Preparation• What stage of development are you at?

• Prior art search

• Free online databases:

• www.google.ca/patents

• www.uspto.gov patents search patents

• ep.espacenet.com

Patents

• 2. Drafting • Description: describe the invention and

support the claims

• Drawings: show the invention

• Claims: define your invention

Patents

• 3. Filing:• Can file in foreign countries within 1 year of

initial filing date

• PCT (International) application• Simultaneous protection in 130+ countries

• Gives 30 months from initial date to decide what countries you are interested in

• Publication after 18 months

Patents

• 4. Prosecution• Applications subject to a stringent review

• May take 7 – 9 years in Canada

• May take 2 – 4 years in United States

• Example of a U.S. Patent (Davco’s vegetation flail):

Abstract

Title

Drawings

ClaimsDescription

Trademark Captures

• Brand names (Coke)• Logos

• Slogans (“Always Coca-Cola”)• “Things” that distinguish (Coke bottle)

Grande Prairie Trademarks

ROPE BUDDY

DAVCO

Benefits of Trademarks

• Creates brand recognition• They are assets for the Owner

Registered versus Unregistered

• Registration:• Exclusive Canada wide right to use mark

• Proof of ownership of mark

• Unregistered:• No cost

• Limited to regions where your mark is used and known

Limitations of Trademark

• Confusingly similar • Descriptive• Geographical• Mere surnames

Steps to Register a Trademark

1. Search2. File3. Examination/prosecution4. Approval and Publication5. Allowance 6. Registration

1) Trademark Searches

• Test the waters

• Become aware of potential conflicts or problems

• Official Marks

2) Filing a Trademark Application

• Who will own the mark?• What is their legal name?

• What goods and/or services are going to be included?• Better to be broad

• Has the mark been used?• When was it been used?

3) Examination/Prosecution

• Are the wares or services properly described?

• Is the mark a:• Laudatory term?

• SUPERIOR

• Surname?• COLE’S

• ABSOLUTE BODO

3) Examination/Prosecution (continued)

• Is the mark:• Of Geographic Significance?

• BARBUDA

• Descriptive?• PATHWAY TIRE

• Phonetic Equivalent?• STAZ-ON - eyeglasses

3) Examination/Prosecution (continued)

• Is the mark:• A Composite Mark?

• BEST CANADIAN MOTOR INNS

• Scandalous?• CALIFORNICATE

• SHIT HAPPENS

3) Examination/Prosecution (continued)

• Is the mark confusing?

• Prior Registrations

• Co-pending Applications

• Section 9

3) Examination/Prosecution (continued)

• Factors considered in cases of confusion:• Distinctiveness of the trademarks

• Length of time the trademarks have been in use

• Nature of the wares, services or business

• Nature of the trade

• Resemblance between the trademarks

4) Approval and Publication

• Once Approved the Trademark is published

• Anyone can oppose an application• 2 months from the date of publication to

oppose• If opposed can abandon mark or go

through the opposition process

5) Allowance

• Notice of Allowance• Application based on use – 6 months to

register

• Application based on proposed use – the longer of 3 years from date of filing or 6 months to register

6) Trademark Registration

• 15 year term – renewable

• Registration is optional:• Protection across Canada

• Easier to enforce

• Foreign priority

How to lose Registration

• Failure to use the mark• Failure to use the mark as registered with

the goods and services listed• Defects in application

• Date of first use

• Chain of ownership• Challenges by prior users

• Within 5 years of registration

Enforcing Registration

• It is the owner’s responsibility to enforce their rights

• Cease and desist letters

• Oppositions

Trademark Timeline

• On average 12 to 18 months to register• First communication from CIPO after 6

months• Deadline to file in other countries based

on Canadian application – within 6 months of filing date

Trademarks outside Canada

• Must be applied for in each country of interest

• Can file at anytime• Priority based on Canadian Application

and/or Canadian Registration• Use in other countries

Industrial Design

• Captures the unique appearance of a functional object

Canadian Industrial Design

Davco Manufacturing Ltd.•Canadian Industrial Design No.109267

•Brush Cutter Tooth

Limitations on Industrial Design

• Different look = different design• Must be registered to have protection

from imitation• Test for infringement: whether there is a

substantial difference

Industrial Design Application

• Must file within 12 months of making it public.

• Must have at least one drawing or photo of the design

• Should show as many views as possible to show all the unique features

• Must describe the features of the design being protected

Application Process

• Examiner will either approve the application or issue report requesting amendments

• Most common amendment – new drawings or photos

• Conflicting Designs• First to file

Industrial Design Registration

• Foreign priority – 6 months of filing• Maintenance fee at 5 year mark to

maintain registration• 10 year term - not renewable• On average takes 1-2 years to register

Copyright

• Literary works (brochures, instructions, manuals, software code)

• Artistic works (photos, illustrations)• Dramatic works (videos, DVD)• Musical works (songs)

• Prevents others from reproducing the work or a substantial portion of the work

• Protects “original” works

• “First owner” is generally the creator (exceptions: employees and photographs)

Copyright

Copyright

• Term – Life of the creator plus 50 years

• Registration – not required but makes it easier to enforce

• Copyright Notice (©) – not required, but prevents the “innocent copying” defense

Copyright Registration

• optional• proof of ownership• easier to enforce

Domain Names

• Domain Names registered on a “first-come-first-served” basis

• Protection against cyber squatters if a domain name is:

• confusingly similar to a trademark;

• registered by someone without a legitimate interest; and

• registered in bad faith (e.g. purpose was to sell it for a profit, to divert web traffic, etc.)

Trade Secrets

• E.g. Recipes for Coca-Cola, KFC• Protection for formulas, processes,

information, etc. that:

• gives the holder some economic benefit; and

• reasonable efforts are taken to keep it secret

Trade Secrets (con’t)

• Benefits:• Prevents individuals from making the information

public• Perpetual - no expiration date• no registration or disclosure requirements

• Weaknesses:• No protection against reverse engineering or

parallel discovery• Protection ends even if wrongfully disclosed

Plant Breeders’ Rights

• Protects plant varieties against being reproduced for commercial purposes

• Must file for protection before first sale

• Protection lasts for 18 years from registration

Integrated Circuit Topographies

• Protects the design of three-dimensional integrated circuits

• Similar to copyright: only protects against copying, not independent creation

• Must file for protection within 2 years of first commercial exploitation

• Protection lasts for 10 years