Intellectual Property Protection | Download now (2023)

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The protection of intellectual property is primarily a federal responsibility and is governed by four main statutes:patentlov,The Trademark Act,copyright, jLaw Industrial Design.

The Canadian Intellectual Property Office of Industry Canada administers these statutes. But cases such as the unauthorized use of a trademark (known as the "law of impersonation of identity") or misappropriation of a trade secret fall under the jurisdiction of the county. In certain circumstances, federal and provincial jurisdictions will overlap, as is the case with spoofing, which is also provided for inThe Trademark Act.

patents

Hepatentlovsetting up what is known as a "first to file" system. In Canada, the first applicant to file a patent application for an invention qualifies for patent protection for that invention.

A Canadian patent grants the owner the exclusive right to manufacture, use and sell an invention in Canada, as defined in the patent claims, for a period of 20 years from the date of application. Patents are granted only for inventions that are new, inventive, and useful and can be obtained for devices, materials, processes, and applications. Patent protection is not available for scientific principles, abstract propositions or ideas; nor is it available to higher life forms such as genetically modified animals.

To be considered novel or novel, the invention must not have been published in such a way that it was publicly available anywhere in the world. An exception to this is information originating from the inventor; a grace period of one year has been established for such information.

For the invention to be considered inventive, the differences between the prior art and the inventive concept in the claims must include steps requiring inventive step.

Finally, the invention must be functional and operable to meet the utility criterion. In other words, the invention must have a practical purpose.

international considerations

Canada, like the United States, is a signatory to many international patent-related agreements, includingParis Convention for the Protection of Industrial Property(Treaty of Paris) andPatent Cooperation Treaty(PCT). The Paris Convention allows applicants to use the earliest filing date in one Contracting State as the effective filing date in another Contracting State, provided the application is filed within 12 months. The PCT, on the other hand, provides an international patent application mechanism that facilitates the filing of patent applications in contracting states.

Canada has also signed agreements with 27 other patent offices around the world. This program, known asHighway for patent processing(PPH), allows an applicant to significantly speed up the processing of a patent application, as long as there is a corresponding patent application with one of the other patent offices.

It is important to note that an invention that was patented in the United States several years ago, for example, will not be patentable in Canada, as the invention will not be considered new. Consequently, timing is an important issue in any new patent filing for companies looking to do business internationally.

Registering a Trademark in Canada

A trademark is a symbol (such as a word, logo, slogan, name, sound, hologram, moving image, three-dimensional product shape, etc., or a combination thereof) adopted and used by a manufacturer or retailer to distinguish and services of others'.

Registration and related matters

A trademark can only be considered registered if it is registered in the Federal Register of Trademarks; there are no provincial trademark registers. Registration gives the trademark owner the exclusive right to use the trademark throughout Canada in connection with the goods and services for which it is registered, and prevents others from using confusingly similar marks. Subscriptions are valid for a period of 10 years and can be renewed indefinitely upon payment of the corresponding administration fee. There is currently no requirement to demonstrate use of the trademark at the time of renewal.

While registration is not required to obtain legal protection (use of, advertising, or promotion of a trademark in a particular geographic area may establish rights to the trademark under the common law of that particular area), the method is always preferred.

The main benefit of registration is the protection afforded to the trademark owner in all provinces and territories of Canada. HeThe Trademark Actprovides a registration system for trademark owners based on the "first use principle". However, it should be noted that five years after a registration is issued, it becomes incontestable based on previous common law rights unless it is shown that the application was made with knowledge of such previous common law rights.

There is no requirement that a trademark must be used before a registration certificate is issued.

Registration is also proof of ownership. As a result, in the event of a trademark ownership challenge, the burden of proof is on the challenger, not the registrant. A registration may be canceled in whole or in part through an administrative procedure if no use has been made of the mark (in relation to the goods and services identified in the registration) for a period of three years, except in special circumstances justifying this lack of usage. usage can be displayed.

international considerations

On June 17, 2019, Canada acceded to the Madrid Protocol and made changes to the Trademark Act. The Madrid Protocol allows trademark owners to file a single application for international registration with the World Intellectual Property Organization (WIPO) and then designate the Member States where protection is sought. Each member state then applies its own laws to determine whether a trademark can be registered in its territory. An application for registration filed under the Madrid Protocol does not grant international protection to a trademark, but facilitates the registration of that trademark in various jurisdictions.

A foreign party may register a trademark in Canada without appointing a Canadian third-party representative to assist with Trademark Office correspondence.

In addition, Canada is a party to the Paris Convention, which allows an applicant to use the filing date of an application for registration as a priority date when filing an application for trademark registration in other countries that are party to the Paris Convention. An applicant can benefit from the priority date no later than 6 months after the date of submission of the original application.

royalty

A copyright gives the author of a literary, artistic, dramatic or musical work a number of rights, including the exclusive right to produce and reproduce the work. Copyright protects the expression of ideas, but not the ideas themselves. It can be used to protect many kinds of works, including books, music, movies, and software.

Registration and related matters

Copyright registration in Canada is allowed, but not required. Copyright law establishes a rebuttable legal presumption that a copyright exists in the creator's work and belongs to its registered owner (similar to trademark law discussed above).

Canada is a signatory to the Berne Convention; therefore, copyright protection in Canada includes, for example, works by US citizens or works first published in the United States.

A copyright in Canada generally lasts for the life of the author plus 50 years.

authorship vs. Property

authorship vs. Ownership It is important to distinguish between authorship and ownership. According tocopyright, the author of a work is in principle the first owner of that work. The first owner of a copyright created by an employee in the context of his employment is the employer, unless otherwise agreed. Relationships with independent contractors (as opposed to employment relationships) can obscure job ownership. More specifically, the person who hires an independent contractor cannot own the copyright in the works created without a written assignment signed by the author or his agent.

If the author is the first owner of a copyright, this has important long-term copyright implications, even in the face of written assignments. A copyright automatically passes to the heirs or successors in title of the author 25 years after his death, as long as the author was the first owner of the copyright.

See below for more information on quotas and licenses.

Industrial designs

An industrial design consists of the shape, configuration, pattern or decoration of an object or a combination thereof. The essence of an industrial design is its visual appeal along with its originality.

Registration and related matters

Unlike other forms of intellectual property, such as trademarks and copyrights, industrial designs must be registered to enjoy legal protection and ensure exclusive rights to the design.

An application for registration of an industrial drawing can be submitted at any time, as long as the design is not published in any way. If this is the case, the application must be submitted no later than 12 months after publication.

Industrial design protection gives the registered owner the exclusive right to manufacture, import, offer for sale, sell or lease any item to which the design is applied.

HeLaw Industrial Designentitles the applicant to exclusive use thereof for a period of 10 years from the date of registration or 15 years from the date of application, whichever is later, against payment of a maintenance fee. To obtain an industrial design registration, there must be an original shape, pattern, or decoration on a manufactured object that is not a use of the product.

trade secrets

A trade secret is confidential information of commercial value that retains its value as long as it remains secret. It is a subset of confidential information that is highly specific and widely believed to have an industrial or technical aspect. The legal protections available for trade secrets differ from traditional intellectual property frameworks such as copyrights, patents, and trademarks because trade secret protections promote economic activity by allowing people to exploit their ideas and classified information. Unlike traditional frameworks, there is also no uniform legal regime for trade secrets. Instead, trade secret protection is achieved through a variety of statutory, common law, and equitable protections. Recognized civil actions to protect trade secrets include:

• breach of contract
• breach of trust
• Breach of a Fiduciary Duty
• illegal enrichment
• Interference in contractual relationships

Some statutes also provide protection for trade secrets, such asthe Penal Code and the Civil Code of Quebec.

Additional considerations

Assignments and licenses

Parties wishing to do business in Canada often partner with an existing Canadian company to introduce themselves to the Canadian market. Often, these types of arrangements require the Canadian party to use the foreign party's intellectual property. This can be achieved through a license to use the foreign party's intellectual property.

Intellectual property can also be sold or transferred. When a transfer of ownership is required, the transferor of the intangible property transfers it in writing and against payment to the transferee, who becomes the new owner. The appropriate offices of the Canadian Intellectual Property Office should be notified in these circumstances to ensure that registration information is up to date and to avoid ownership disputes after the transfer has taken place.

Guarding your intellectual property

Just as a property owner would hire a security guard to protect their investment, intellectual property owners should always be on the lookout for potential infringement.

In cases where a party's intellectual property rights become too large or complex, it is advisable to hire a Canada-based agent who will perform the necessary intellectual property oversight duties. Such a modest investment can save a lot of time and money later on.

Enforce your intellectual property

Intellectual property owners and licensees can sue to enforce their rights in Canadian courts. This includes infringement procedures (patents, trademarks, copyrights), prosecution (patents) and actions under specific regulatory regimes such as the patented medicines (Compliance Notice). There are no specialized intellectual property courts in Canada, although the federal court has developed expertise in these matters. Provincial courts have concurrent jurisdiction, with the exception of declaratory judgmentsrowingIt can only be awarded by federal court. Intellectual property cases generally have five main stages: a) pleadings; (b) documentary discovery; (c) oral discovery; d) expert reports; and (e) lawsuits. Motions and summary proceedings can be filed under certain circumstances. Remedies for intellectual property infringement are prescribed by federal statutes and common law, including: damages (patent, trademark, copyright), profit calculation (patent), destruction of infringing property (patent, commercial trademark), warranties (patent, trademark, copyright). ) and court costs. Final decisions may be appealed to full federal or provincial courts of appeals, and appeals to the Supreme Court are then possible, on leave, in cases of national concern.