Intellectual Property:An Introduction for Engineers

Ridout & Maybee LLP

Barristers & Solicitors

Patent & Trade-mark Agents

William R. Edgar, Ottawa, Canada

• “The economies that will thrive over the next decade will be those that excel at innovation. …

• Growing economies today are anchored in the creation of an environment where the capacity and the incentives are there to generate new ideas, to turn those ideas into new products and to take those new products into new markets.”

Finance Minister Paul Martin

• “We believe that there is a need for simultaneous action at the national level and at the level of individual firms. Canada has to look at its insufficient commitment to innovation, and firms need to improve practices and capabilities that foster innovation. Otherwise, we will not be among those societies that will prosper in the new millennium.”

The Conference Board of Canada

Types of Intellectual Property• Patents• Integrated Circuit Topographies• Plant Breeder’s Rights• Trade Secrets• Industrial Designs• Copyright• Trade-marks• Soft Value IP – Corp. and Employee Knowledge• [Timber Marks]

PATENTS

• Exclusive Right to Make, Use, Sell, and Offer for Sale Product, Process, Apparatus

- Invention: New and useful art, process,

machine, manufacture or composition of

matter or improvement in any of them• Novelty, Inventive Step, Utility

PATENTS(Continued)

• Special Interest:

- Software, mice, business methods

• Some Exclusions

- Method of medical treatment

- Business systems(?)

Major Issues for Engineers

• Use the IP System

• Ownership of Inventions

• (Non) Disclosure of Inventions

• Recording of Inventions

• When to Apply for Patents

Patents: Ownership of Inventions

• Inventor

• Independent Contractor

• Employer / Employee

- Scope of employment

- Employed to invent

- Employment contract

Patents: (Non) Disclosure of Inventions

• Public Disclosure Bar- Exception U.S.- Limited exception Canada

• Non-Disclosure Agreement- Work colleague (for verification)- Potential investor- Potential manufacturer- Your grandmother

Patents: Record Keeping• Recording / Documenting of Inventions• Why? Numerous Reasons – Best:

- Establish date of invention for U.S. purposes - Establish independent invention path for first to file- The more data, the better job from patent agent

• Very Highly Preferable: Bound Notebook- To be avoided: loose leaf, scraps of paper

Patents: Record Keeping(Continued)

• Dated• Subsequently (soon) Read and

Understood by:- A colleague (cross reference to non- disclosure agreement)- Patent Lawyer/Registered Patent Agent

Patents: When to Apply

• When the Invention is Complete- Requirements of patent application- Importance of testing

• First to File Patent Systems• Provisional Application:

- Extremely dangerous for most purposes- Emergency measure

• Importance of Professional Advice

Trade Secrets

• Anything Which is Confidential, Including:

- Research

- Inventions not patented

- Know-how• Possible Situations for Trade Secrets:

- Very short useful life

- Very long useful life

Trade Secrets(Continued)

• Dangers- Reverse engineering- Disgruntled employee

• Caution:- Spread the bits around- Need to know- Internal security

Industrial Designs• Basically the Appearance of Something

- Shape- Configuration- Pattern- Ornament

• NOT Functional Features• Restricted Scope of Protection• Value / Cost Ratio Favours Registration in Many

Cases• Sometimes Useful to Supplement Patents

Other Forms of Intellectual Property (Not Quite Patents)

• Integrated Circuit Topographies

- Little used

• Plant Breeder’s Rights

- Highly specialized

Trade-marks

• Exclusive Right to Use Mark, Device, etc.

• Marketing Rather Than Technical• Special Types:

- Certification marks- Distinguishing guise- Section 9

Trade-marks(Continued)

• Relevance to Engineering- No time limit- Excellent potential protection for non-patentable subject matter- Exclusivity after patent expiration - Coca-Cola - Ski-Doo - IBM

• May Become Synonymous with Quality

Copyright

• Easy: Virtually everything you create in written or electronic form is automatically protected world-wide from creation

• Protection: Against copying

Not an exclusive right: i.e. another may independently create the same work

Copyright(Continued)

• Registration: O.K.; CheapProblems: - Changing works, e.g. computer programs- Canada: No specimens- U.S.: No access to specimens

• Best: Contract!!!

IP Overlap of the “Big 4”

• All of the “Big 4” Forms of IP may coexist in a single product

• Example: Container for Fluids:(1) Patent:

- Engineered to prevent “glugging” and consequent spillage (adding oil or windshield washer fluid)- Also engineered to start pouring only after a substantial angle

IP Overlap of the “Big 4”(Continued)

(2) Industrial Design:- Shape of container not entirely dictated by the above functions

(3) Copyright:- All the graphics

(4) Trade-mark:- Label as a whole- Colour combination- GLUGLESS™

Nuggets

• Be aware of IP, especially patent, design and copyright whenever taking up a new position

• Be sure IP rights are clear when taking up a new position : Employment/IP rights contract

• Seek professional help early – do not wait• Above all - DO NOT DISLOSE.

Useful Websites

• For information on the Intellectual Property Profession – Intellectual Property Institute of Canada:www.ipic.ca

• For Intellectual Property databases and other useful information from the official Industry Canada website:www.stategis.gc.ca