Intellectual Property

By Benjamin Coulson

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What is Intellectual Property? Real property is tangible but not movable (e.g., buildings, land)

ownership is indicated by a deed Personal property is tangible but movable (e.g., clothing,

electronics) ownership indicated by a receipt

Intellectual property is intangible... how is ownership determined?

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Intellectual Property... “Creations of the Mind”

Inventions Literary and artistic works Symbols, names, images Designs and formulations

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Why have Intellectual Property? Creativity, ideas and designs promote prosperity in a society Protection of these ideas allows individuals or companies to

compete and excel in the marketplace - benefit for their ingenuity

(Chester Carlson of Haloid >> Patent electrostatic copying process >> Xerox)

Provides acknowledgement to owner Establishes a “technology database” of valuable historical

information Prevents unfair infringement by competitors

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Source: WIPO = World Intellectual Property Organisation (www.wipo.org)

Types of Intellectual Property Industrial Property

Trade Secrets Trademarks Inventions (Patents) Industrial Designs

Copyright Literary work (novels, poems, plays, newspapers, computer programs) Databases Dramatic work and music: film, choreography Artistic creations (drawings, paintings, sculpture) Architectural designs Advertisements Maps, technical drawings

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Trade Secrets Protects the secrecy of a product formulation or process

formulae, chemical compounds, mixtures, patterns & molds, customer lists, business methods, marketing plans, etc.

No time limit, however owner must exercise reasonable effort to maintain secret

“Industrial espionage” Legal: studying published material, reverse engineering, monitoring

competitors, talking to competitor’s employees Illegal: fraud, bribing competitor’s employees, trespassing

People problem - generally loss of secret through careless, disgruntled, unethical or dishonest employees (non-competition, non-disclosure clauses, confidential documents)

When high probability of independent discovery, patenting is favoured

e.g., formula for Coca-Cola (100+ yrs), Zildjian cymbals (since 1623 in Ottoman empire)

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Source: “Introduction to Professional Engineering”, Andrews & Hale, University of Waterloo, 1991.

Trade Marks... TM ®

Names, symbols, logos, packaging (e.g., Coke) Indicate source of a product and distinguish it from similar products May be registered or unregistered if used in commerce (protection under

provincial Common Law) - $150 to file, $200 for registration In Canada, no legal need to identify as registered

but necessary to prevent items becoming “generic” - use name as adjective, not noun (escalator - moving staircase, cellophane - plastic wrap)

may be renewed every 15 years in Canada (5, then 10 yrs in US) - $300 prohibited items in Canada include: “Royal”, symbols of federal/provincial

institutions, surnames, generic terms published in the Trade Mark Journal

Certification marks - attest to quality (wool mark), conditions of manufacture (Kosher), persons making product (“union-made”) or geographic source (Champagne)

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Evolution of the Shell “Pecten”

Source: www.shell.com, “pectenhistory.pdf” dated February 15, 1999

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Patents Inventions are products or processes that give a new or

improved way to do something Protected by patents (Federal Patents Act)

Patents give property rights to individual Last for 20 years (in Canada/US), then invention becomes public domain Details of patent made public after registration (18 months in Canada)

Provides a “head-start” for inventor in exchange for publicizing technical details

Invention must satisfy criteria to be patentable Novel: must be new idea, cannot already exist Utility: cannot be impossible to achieve (e.g., perpetual motion machine) Inventive: not an obvious improvement Patentable subject matter: manufactured article, apparatus or machine,

substance, method or process for doing something Does not include: natural items, methods of doing business, scientific

principles, illicit objectives, medical treatments

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Patents (continued) Patent Application (Canada)

Background of Invention (Prior Art, Field of Invention) Summary of Invention, Brief Description of Drawings Description of Preferred Embodiments Claims Abstract, Drawings Application Fee: filing fee ($300), examination fee ($700), grant of patent

fee (~$200) - reduced fees for a “small entity” - patent agents ($150/hr… $4000 for a simple patent!)

Yearly maintenance fees (to promote re-evaluation of economic potential of patent)

Not required to be marked as “patented” (sometimes identified as “Patent Pending” as warning) - onus is on other inventors

Infringement dealt with in civil court (litigation is expensive!!) Employee contracts assigning rights of inventions to employers

(applicable within realm of work for company)

R. HornseyIP 111876 1895 1904 1927 1957 1968 c.1980 c.1988 c.1995 2000

Source: www.wipo.org

Industrial Designs (Design Patents in US) Protects non-functional shape or form of an article Canadian Industrial Design Act

must register design within 1 year of “publishing” - $160 degree of originality falls between patents (high) and

copyright (low) simpler to register than a patent (description, drawings,

declaration) registered designs must be marked as “Rd.” or

“Registered” renewable every 5 years - $215

Artistic creations are protected by copyright, except when they are to be mass produced

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Copyrights... ©

Protects form of expression, not content (e.g., ideas, theories, data, formulae, etc.)

Lasts for 50 years following creator’s death (70 yrs in US) Canadian Copyright Act

Literary: books, poems, catalogues, technical reports, specifications, engineering drawings, maps, databases, computer programs

Artistic: paintings, drawings, sculptures, architectural design, documentary films

Musical: compositions and scores with or without words Dramatic: nondocumentary films, screenplays, scripts, plays,

pantomimes, choreography Dramatico-musical: operas and musicals

Prohibition of making copies of “mechanical contrivances” (i.e., tapes, CDs, records) even if work is not copyrighted

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Copyright ctd … Marking not required (use of symbol or “copyright” falls under

UCC) - copyright is automatic in Canada (and US) but work must be in permanent form

Registration of copyright ($35) puts onus on infringer (criminal offence punishable by up to 5 yrs in jail and $1 million fine)

Limited copying permissible for short quotations, purpose of research or study, quoting in newspapers or reviews, and some charitable performances

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Further Reference... General/Patents/Industrial Designs

www.uspto.gov - US Patent Office www.wipo.org - World Intellectual Property Organisation strategis.gc.ca - Industry Canada (follow links to CIPO) www.patent.gov.uk - UK Patent Office www.ipaustralia.gov.au - IP Australia www.colitz.com/site/wacky.htm - Wacky Patent of the Month soundreach.simplenet.com/psp/ - Pretty Strange Patents

Trade Secrets www.thetso.com - The Trade Secret Office www.execpc.com/~mhallign/ - The Trade Secrets Homepage

Trademarks www.inta.org - International Trade Mark Association www.ggmark.com - All About Trade Marks

Copyright www.loc.gov/copyright - US Library of Congress www.whatiscopyright.org - What is Copyright?