Notes_for_CHAPTER_13_-_INTELLECTUAL_PROPERTY

Notes_for_CHAPTER_13_-_INTELLECTUAL_PROPERTY - CONCORDIA...

Info iconThis preview shows page 1. Sign up to view the full content.

View Full Document Right Arrow Icon
This is the end of the preview. Sign up to access the rest of the document.

Unformatted text preview: CONCORDIA UNIVERSITY FACULTY OF ENGINEERING AND COMPUTER SCIENCE ENGR 201 PROFESSIONAL PRACTICE AND RESPONSIBILITY PROFESSOR : REMI ALAURENT, ENG. CHAPTER 13 INTELLECTUAL PROPERTY 1. Patents 2. Trademarks 3. Copyrights 4. Industrial designs 5. Integrated circuit topographies 6. Trade secrets page 1 page 6 page 8 page 10 page 12 page 14 TOPIC 1 : PATENTS (source : Canadian Intellectual Property Office) General principles ♦ Patents cover new inventions (process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention. ♦ Patents offer inventors monopolies on their creations for specific periods, and thus provide an incentive for creativity, research and development. Rev. 2007-06 © Concordia University, 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 ♦ The possibility of patent protection is a strong incentive to take the risk of investing time and money in devising, perfecting, producing and marketing new products. ♦ Patents are also a means of technological exchange. Patents are descriptive and publicly available. Therefore, they promote sharing of knowledge, and are vital resources for other inventors, businesses, researchers and academics who need to keep up with the developments in their fields – if only to avoid duplicating something already patented! The Patent Act ♦ The Patent Act, which is a federal statute, defines what is a patent, what can be patented, the process of obtaining a patent, the protection it affords before and after a patent is granted, markings etc. ♦ Through a patent, the Canadian government grants the inventor the right to exclude others from making, using and selling the invention from the day the patent is granted to a maximum of twenty years after the day on which the patent application was filed. ♦ A patent is an asset : it can be sold, licensed, or used as asset or collateral to secure funding. ♦ However, the patent may lapse for non-payment of maintenance fees. ♦ Also, the patent grants protection in Canada but not in foreign countries. Applications must be made in each country separately, but several international treaties and conventions facilitate this task. What can be patented ♦ Three criteria : the invention must Be new (first in the world) Be useful (functional and operative) Show inventive ingenuity and not be obvious to someone skilled in that area. ♦ A patent is granted only for the physical embodiment of an idea or for a process that produces something tangible (and, perhaps, saleable). ♦ The invention can be : A product (a door lock) A composition (a chemical composition used in lubricants for door locks) PAGE 2 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 A process (a method for producing door lock parts) An improvement on any of these (90% of patents are granted for improvements to existing patented inventions). ♦ The invention cannot be : A scientific principle An abstract theorem A idea A method of doing business A computer program A medical treatment ♦ A patent may be obtained for an improvement to an existing invention, for which a patent may still be in force in Canada or elsewhere. Marketing or selling the new product may therefore be in infringement of the older patent. To resolve this situation, patentees usually grant licenses to each other. This must be resolved through negotiation. The Patents Office ♦ The Patents Office is a federal agency directed by the Commissioner of Patents. ♦ It is a part of the Canadian Intellectual Property Office (CIPO), an agency of Industry Canada located in Gatineau, Québec. ♦ It is responsible for: Receiving and examining applications for patents (about 40 000 per year) Granting patents in Canada Recording assignments of patents Maintaining search files of Canadian and foreign patents documents and a search room for public use (over 1,7 million Canadian patents and about 6 million American patents are available) Offering copies of Canadian patents prior to Patent no. 445 931 (!) for sale to the public Publishing and disseminating patent information (notably on the Internet, through the on-line Patent Database). The Patent Agent ♦ Preparing and prosecuting a patent is a complex task that few people undertake on their own. PAGE 3 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 ♦ Hiring a registered patent agent is not mandatory but highly recommended. ♦ Registered patent agents must pass various patent law and practice examinations before they are allowed to represent inventors before the Patents Office. The process of patenting of an invention In order to be granted a patent, one must go through: 1. Conducting a research to determine is the invention has ever been patented before. If so, there is no point in proceeding any further. 2. Preparing a patent application, which consists of: i. an abstract (a brief summary of the contents of the specification) ii. a specification, which comprises : 1. a clear and complete description of the invention and its usefulness 2. claims which define the boundaries of patent protection 3. Filing the application, with the necessary documents, forms, statements and fees. 4. Requesting examination of the application, as it is not automatic with filing. This must be done within five years of filing, and involves fees again. The examination process might take two to three years. "Prior art" or protests may be file by people who object to the patent being granted. 5. The prosecution is the examiner's task; it consists of assessing the application for format and of searching among prior patents and literature to find anything closely related. This can lead to objections, which can be responded to and lead to amendments, and so forth, until the application is rejected or granted. 6. When the patent is granted, fees must be paid. 7. Patent maintenance fees are to be paid yearly, and they increase in time. PAGE 4 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 Protection ♦ Patent infringement occurs when someone makes, uses or sells the invention without permission from the patent holder, in a country that has granted the patent at any time during the duration of the patent. ♦ The patent holder may sue for damage and/or seek a cease and desist order in the appropriate court. ♦ The patent holder may also sue for reasonable compensation for an infringement that occurred in Canada from the date the application was made available for public inspection to the date of the grant. ♦ Patent marking is not required. ♦ Marking the invention "Patent pending" or "Patent applied for" has no specific legal effect but may serve as a warning to others that rights may be enforced once the patent is granted. Abuse ♦ A patent may be subject to a compulsory license starting three years after the grant if the patent holder is : not meeting demand in Canada hindering trade or industry in Canada by refusing to grant a license using a process patent to unfairly prejudice production of a nonpatented product ♦ Complaints are heard by the Commissioner and can be appealed to the Federal Court of Canada. International conventions ♦ The Paris Convention for the Protection of Intellectual Property : the earlier filing date in one member country will be recognized by other treaty members provided you file within a year. ♦ The Patent Cooperation Treaty, administered by the World Intellectual Property Organization, allows to file in as many as 133 member countries with a single application filed in Canada. PAGE 5 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 TOPIC 2 : TRADEMARKS (source : Canadian Intellectual Property Office) General principles ♦ a trade-mark is a word, a symbol, a design, a combination of these, used to distinguish the wares or services of one person or organization from those of others on the marketplace. ♦ A registered trade-mark can be protected from misuse and imitation. ♦ There are three basic categories of trade-marks : Ordinary marks are words or symbols which distinguish wares or services (example : Compaq) Certification marks identify wares or services which meet a particular standard and are licensed to users by the owner (example : "Intel inside" logo ) Distinguishing guise identifies the unique shape of a product or its package (example : cookies or candies with special shapes) ♦ A trade-name, which is a name under which a business is conducted, can be registered as a trade-mark only if it is also used as a trademark to identify wares or services. ♦ Exclusions from registered trade-marks include : names and surnames – generally words of a clearly descriptive nature "deceptively misdescriptive" marks words that clearly designate the place of origin of the wares or services words in other languages words, symbols, sounds and ideas that suggest someone else's trade-marks marks that represent certain official symbols marks that are obscene, scandalous or immoral portraits or signatures of living persons or who have died within 30 years plant variety denominations protected geographical denominations for wines and spirits ♦ A trade-mark can but does not have to be registered – using a mark for a certain length of time may establish ownership. It is easier to PAGE 6 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 protect if it is, since establishing the ownership of a trade-mark through Common Law can be tedious, and expensive. ♦ A trade-mark is valid for 15 years, and is renewable for the same. ♦ The registration of a trade-mark that is not in use may be expunged either by the Registrar or by the Federal Court, at the request of the Registrar or of a third party, after three years from the date of registration. The trademarks Act ♦ The act sets what is a trade-mark, what kinds of marks may be registered, what is excluded, prohibitions, duration, fees, procedures, forms etc. The Trade-marks Office ♦ The Trade-marks Office is a federal agency directed by the Registrar of Trade-marks. ♦ It is a part of the Canadian Intellectual Property Office (CIPO). ♦ It is responsible for: Receiving and examining applications for trade-mark registration Granting registrations in Canada Recording and index trade-marks Maintaining search files of Canadian trade-marks and a search room for public use Publishing and disseminating trade-mark information (notably through the Trade-Marks Journal). The trade-mark agent ♦ Preparing a trade-mark application and following through on it is a complex task that few people undertake on their own. ♦ Hiring a trade-mark agent is not mandatory but highly recommended. The process of registering a trade-mark ♦ It is similar to the patent process, albeit less complicated. PAGE 7 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 Protection ♦ Trade-mark infringement occurs when someone uses the trade-mark without permission from the registered owner. ♦ The registered owner may sue for damage and/or seek a cease and desist order in the appropriate court. ♦ Trade-mark markings such as ® and ™ are not required. TOPIC 3 : COPYRIGHTS (source : Canadian Intellectual Property Office) General principles ♦ Copyrights provide protection for artistic, dramatic, musical or literary works, including computer programs, and three other subject matters known as performance, sound recording and communication signal. ♦ An author has exclusive right to reproduce his work or to allow anyone else to do so. ♦ This right applies to publication, production, reproduction, conversion, translation or execution of the work. ♦ Copyrights exist whenever a work is created but, for better protection, copyrights can be registered in the Registry of Copyrights. ♦ The author, normally the person who creates the work, generally owns the copyright. ♦ If a work is created during the course of employment, the copyright belongs to the employer unless there is an agreement to the contrary. ♦ Copyright ends at a legally defined time, usually 30 years but exceptions exist for special categories (photograph, certain cinematographic works, sound recordings, performer's performances and communication signals, among others) for which protection can exceed 50 years. The Copyrights Act ♦ The act sets what is a copyright, what kinds of works may be registered, what is excluded, prohibitions, duration, fees, procedures, forms etc. PAGE 8 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 ♦ The Copyright Act provides that any "fair dealing" with a work for purposes of private study or research or for criticism, reviews or news reporting is not an infringement. ♦ The Act also provides for several exceptions, notably for non-profit educational institutions: these are permitted to make copies, use or perform copyrighted material for use in the classroom, provided there are no suitable substitutes available in the commercial marketplace, and subject to restrictions (use of broadcast documentaries is excluded, for example). The Copyrights Office ♦ The Copyrights Office is a federal agency directed by the Registrar of copyrights. ♦ It is a part of the Canadian Intellectual Property Office (CIPO), an agency of Industry Canada. ♦ It is responsible for: Registering copyrights in Canada and issuing certificates Maintaining the official Register of Copyrights Publishing and disseminating copyright information The process of registering a copyright ♦ It is similar to the process of registering a trade-mark. Protection ♦ Copyright protection is automatic and extends to any country included in the Berne Copyright Convention, the Universal Copyright Convention, the Rome Convention (for sound recording, performances and communication signals only) or the World Trade Organization. ♦ Registration is evidence of ownership and transfers the onus of proof to the opponent, but is no guarantee against infringement. ♦ Enforcement is sought through appropriate courts. ♦ Copyrights markings such as © are not required but is not conditional on registration. ♦ Royalties and tariffs are sums paid to copyright owners for the permission to sell or use their work. It is a very complex domain PAGE 9 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 regulated by a federal tribunal known as the Copyright Board, located in Ottawa. Moral rights ♦ Even if a copyright is sold or ceded to someone else, the author retains moral rights which mean that no one, including the person who owns the copyright is allowed to distort, mutilate or otherwise modify the work in a way that is prejudicial to the author's honour and reputation. ♦ Moral rights cannot be sold or transferred but may be waived. ♦ Moral rights exist for the same duration as the copyright, and can be passed on to the heirs of the author even if they do not own the copyright. TOPIC 4 : INDUSTRIAL DESIGNS (source : Canadian Intellectual Property Office) General principles ♦ An industrial design is the features of shape, configuration, pattern or ornament, or any combination thereof, applied to a finished article by hand, tool of machine, and are judged solely by the eye. ♦ The design must have features that "appeal to the eye"; their aesthetic merit will not be judged but their originality will be. ♦ An industrial design which also has original useful functions might be patented. ♦ An industrial design first created as a "work of art" can be protected as an industrial design even if it is protected under the copyright. ♦ A product that has acquired distinctiveness may eventually be registered as a trade-mark. ♦ Registration gives exclusive rights to a design. ♦ Exclusions from industrial design registration include : designs that are utilitarian only and are not intended to provide visual appeal designs that have no fixed appearance (example : holograms) designs for components that are not clearly visible PAGE 10 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 a method of construction an idea materials used in the construction of an article the useful functions of an article colour ♦ registration is for a term of ten years but a maintenance fee applies after five years. The Industrial Design Act ♦ The Act provides for registration, exclusive rights, proprietorship, assignments and actions for infringement. The Canadian Industrial Design Office ♦ The Canadian Industrial Design Office is a federal agency which is a part of the Canadian Intellectual Property Office (CIPO). ♦ It is responsible for: Registering industrial designs in Canada and issuing certificates Maintaining the official Register of Industrial designs Publishing and disseminating industrial design information The process of registering an industrial design ♦ It is similar to the process of obtaining a patent; the big difference is that industrial design does not cover how the machine works but the visual features of the design, not features of function or construction. ♦ At least one drawing or photograph must be submitted. ♦ Many people require the help of a patents agent. Protection ♦ Similar to the protection afforded to trade-marks. PAGE 11 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 TOPIC 5 : INTEGRATED CIRCUIT TOPOGRAPHIES (source : Canadian Intellectual Property Office) General principles ♦ The newest kind of intellectual property : On May 1, 1993, the Integrated Circuit Topography Act and Regulations came into force. ♦ The Act defines the protection available for integrated circuit topographies, the three-dimensional configurations of the materials that form integrated circuits, whether they have been embodied in an integrated circuit or not. ♦ "Integrated circuit product" means a product, in a final or intermediate form, that is intended to perform an electronic function and in which the elements, at least one of which is an active element, and some or all of the interconnections, are integrally formed in or on, or both in and on, a piece of material; ♦ "Topography" means the design, however expressed, of the disposition of: (a) the interconnections, if any, and the elements for the making of an integrated circuit product, or (b) the elements, if any, and the interconnections for the making of a customization layer or layers to be added to an integrated circuit product in an intermediate form ♦ Topographies which define only part of the structure needed to perform an electronic function may be registered. For example, topographies which define generic layers of gate array integrated circuit products, and topographies that define interconnection layers which customize gate array integrated circuit products to perform specific electronic functions, may be registered separately. ♦ A topography will qualify as original if it is developed through the application of intellectual effort, and if it is not produced by the mere reproduction of all, or a substantial part, of another topography. The Act does not protect pre-existing topographies which are commonplace among topography designers or integrated circuit product manufacturers. ♦ Some integrated circuit products, such as Random Access Memories (RAMs) and Read Only Memories (ROMs) may be used to store sets of instructions for electronic processors. In addition to the protection PAGE 12 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 available for integrated circuit topographies embodied in such integrated circuits, the sets of instructions they store may be subject to protection under the Copyright Act as literary works, and may in some cases be patentable as industrial methods. ♦ Other aspects of integrated circuit products may also be patentable, for example, the structure and method of operation of electronic circuits embodied in integrated circuit products, or industrial processes used to manufacture integrated circuit products. Indeed, protection available under the Patent Act can be much broader than the protection available under the Integrated Circuit Topography Act, and should generally be considered in addition to protection under the Integrated Circuit Topography Act. The Integrated Circuit Topography Act ♦ The Act provides protection by giving owners of registered topographies exclusive statutory rights to control certain actions. The legislation permits owners of registered topographies to exclude others from: • reproducing a protected topography or any substantial part of one; • manufacturing an integrated circuit product incorporating the topography or a substantial part of one; • importing or commercially exploiting (which includes the sale, lease, offering or exhibiting for sale or lease, or other commercial distribution) a topography or a substantial part of one, or of an integrated circuit product that embodies a protected topography or a substantial part of one; • importing or commercially exploiting an industrial article which incorporates an integrated circuit product that embodies a protected topography, or a substantial part of one. ♦ The Act protects registered integrated circuit topographies for up to ten years. ♦ The term begins on the filing date of the application for registration. The term ends on December 31 of the tenth year after the year of the first commercial exploitation or the year of the filing date, whichever is earlier. PAGE 13 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 The Canadian Intellectual Property Office ♦ The federal agency responsible for integrated circuit topographies in Canada is the Canadian Intellectual Property Office (CIPO). Protection ♦ Similar to the protection afforded to trade-marks. ♦ Protection under the Act is extended to nationals of other countries on a reciprocal basis, thereby making protection in other countries available to Canadians. ♦ Exceptions : rights applying to integrated circuits products legitimately put on the market anywhere with the owner's authorization are exhausted after the first legitimate sale of the product copy for the purpose of evaluation, analysis, research or teaching original topographies may be created through reverse engineering TOPIC 6 : TRADE SECRETS General principles ♦ A trade secret is an information about a creation that is kept secret. ♦ Its protection derives from its secrecy alone. ♦ Secrecy can be kept by various means, including material (keeping a “secret recipe” under locks or restricting access to a process unit, for example), contractual (secrecy agreements in contracts with suppliers and employees, for example) and legal (notably under the Civil Code of Québec and provisions respecting professional secret). ♦ Trade secrets can be traded with willing buyers, licensees, etc. but strict protective provisions have to be written into the contracts. ♦ Trade secret offers very little protection against the invention or discovery of the subject matter of a trade secret, to the contrary : the person who discovers or invents the “trade secret” may not only use it but also publish the information or, worse, apply for a patent. ♦ Protection and/or compensation for alleged violations must be sought in appropriate courts. See section 1612 of the Civil Code of Québec : PAGE 14 OF 15 © Concordia University 2003 ENGR201 PROFESSIONAL PRACTICE AND RESPONSIBILITY CHAPTER 13 1612. The loss sustained by the owner of a trade secret includes the investment expenses incurred for its acquisition, perfection and use; the profit of which he is deprived may be compensated for through payment of royalties. ♦ Some protection is provided by professional laws. This may involve members of certain professional orders (including engineers). ♦ An exemption of liability when public interest is concerned is provided by section 1472 of the Civil Code of Québec : 1472. A person may free himself from his liability for injury caused to another as a result of the disclosure of a trade secret by proving that considerations of general interest prevailed over keeping the secret and, particularly, that its disclosure was justified for reasons of public health or safety. REQUIRED READING • None SUGGESTED READING • None REFERENCES • Canadian Intellectual Property Office: http://strategis.gc.ca/sc_mrksv/cipo/welcome/welcom-e.html PAGE 15 OF 15 © Concordia University 2003 ...
View Full Document

This note was uploaded on 05/09/2010 for the course ENGR 201 taught by Professor Remialaurent during the Winter '10 term at Concordia Canada.

Ask a homework question - tutors are online