Intellectual Property
 

What is intellectual property?
There are six categories or types of intellectual property: copyright, trade-marks, industrial designs, integrated circuit topographies, patents and trade secrets/proprietary information.

A copyright is the exclusive right to publish, produce, reproduce, translate, communicate, perform or exhibit a creative work, or the right to permit others to do so. Copyright attaches to original literary, artistic, dramatic or musical works, and to computer software.

A trade-mark is a word, symbol, design, or a combination of the foregoing, used to distinguish the goods or services of one person from those of others in the marketplace. Slogans, names of products, business names, distinctive packages and unique product shapes are examples of features that may be trade-marked.

An industrial design is any original shape, configuration, pattern or ornamentation applied to an article and which affect the article's visual appeal. Examples include the shape of a chair or the decorative features of a china plate.

An integrated circuit topography is a three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs. An integrated circuit is a manufactured device made up of a series of layers of semiconductors, metals, insulators and other materials.

A patent is the exclusive right, granted to an inventor by the government through a registration process, to exclude others from making, using or selling a new and useful invention, which may include a product, a composition of materials or chemicals, a process, or an improvement to any of the foregoing.

Trade secrets and proprietary information consist of such things as know-how, customer and supplier lists, ideas, business plans and other documents, and the many other types of confidential or critical information that a company develops for use in its business.

It is important to understand that one product may involve several types of intellectual property. For example, a semi-conductor may contain copyrighted software, an integrated circuit topography, a patented process and proprietary information — it may even be part of a product line that is trademarked.

BrazeauSeller.LLP routinely advises clients regarding the characterization of intellectual property and the various means of protecting such property.

How can intellectual property be protected?

Copyright is acquired automatically upon the creation of an original work whether or not the copyright is registered with the Canadian Intellectual Property Office ("CIPO"). However, registration does enable the owner to obtain a certificate of ownership that can be used in court to establish ownership and also prevents a copyright infringer from arguing that they were not aware that the copyright existed. In most cases, copyright in Canada exists for the life of the author plus 50 years following the end of the calendar year in which the author's death occurred. Generally, the owner of copyright is: (a) the creator of the work, (b) the employer of the creator of the work if the work was created in the course of employment and if there is no agreement to the contrary, (c) the person who commissions a photograph, portrait, engraving or print for valuable consideration (unless there is an agreement to the contrary), or (d) a person who has acquired ownership of the copyright from a prior owner. Although it is not necessary in Canada to mark a work with a copyright notice, it is advisable to do so because marking is required in some other countries and marking serves as a general reminder to others that the work is protected by copyright. Copyrights may be assessed and/or licensed.

A trade-mark must meet certain requirements in order to be registerable in Canada; however, a trade-mark does not have to be registered in order to be valid. Generally, the first person to use a unique trade-mark will have the exclusive right to continue to use that trade-mark in those markets in which they actually use it. Registration of a trade-mark provides evidence of exclusive ownership of the trade-mark throughout Canada (whether or not it is actually used in all parts of Canada) and provides more options for enforcing a trade-mark holder’s legal rights. Also, the process of registration helps to verify that the trade-mark is unique and does not conflict with other registered trade-marks. The registration of a trade-mark is valid for 15 years and is renewable for 15-year periods thereafter. Registration of a trade-mark in certain other countries may also offer foreign registrants protection in Canada if the trade-mark has become sufficiently known in Canada. Trade-marks (whether registered or not) may be assigned and/or licensed.

An industrial design must be registered to be effective. In the absence of registration, the creator of an industrial design cannot be protected against imitation. Registration provides such protection throughout Canada for a 10-year period. In many cases, an industrial design is also protected by copyright; however copyright ceases to apply to an industrial design if it is used to produce more than 50 single useful articles or sets of articles.

An integrated circuit topography must be registered to be effective. Registration lasts for a period of up to 10 years. Upon registration, the original design of the topography is protected whether or not it has been embodied in a product. The owner of a registered topography can exclude others from reproducing it, using it or exploiting it.

A patent must be registered to be effective and there are fairly stringent criteria that must be met in order to do so. The owner of a patent has the right to exclude others from making, using or selling the patented invention in Canada for a term from the day the patent was granted to 20 years after the patent application was made. In exchange for this "monopoly", the government will publish the patent application 18 months after it has been filed in Canada or in a foreign jurisdiction, thereby permitting others to benefit from the advance in technology and information inherent in the patented invention.

Trade secrets and proprietary information are capable of contractual protection. A non-disclosure agreement is one such type of contract that permits the owner of trade secrets and other confidential or proprietary information to give access to a third party based upon a contractual understanding that the third party will not use or further disseminate the information, except as permitted by the terms of the agreement. Similarly, a company should contract with its employees to ensure that they use such secrets and information accrue to, and are used only for, the company's benefit (see above).

The protection of intellectual property rights has never been more important, or more complex, than in today's e-commerce marketplace. BrazeauSeller.LLP has years of experience in regard to the creation, protection and licensing of intellectual property in Canada. As the various types of registrations for intellectual property are valid only in the country of registration, foreign registrations are often critical to the protection of such property. As a member of Meritas, a worldwide network of business law firms, BrazeauSeller.LLP has affiliated lawyers throughout the world that can assist with intellectual property matters in foreign jurisdictions.