Intellectual Property

What is IP? :

Industrial Property:

Inventions:
- new idea that solves technical problem
and can be practically used or
manufactured

Marks:
- any word, name, symbol, colour, or
combination used by firm to identify its
goods
or services

Industrial Designs:
- original 2 or 3 dimensional lines, designs
colours or shapes

Appelations of Origin:
- geographic names designating agricultural
products e.g. champagne

Trade Secrets/Know-how:
- any unpatented formula, device, expertise
(proprietary technology) used by a firm
 Literary and Artistic Works:

- any words, music, pictures or combination

- new technologies e.g. software

How is IP Protected?

1/ National Systems:

- each country has IP laws, with patent, trademark

and copyright protection systems;

- developed countries - stronger protection

- developing countries - weaker protection

- patents give inventor exclusive right to use, sell or

license a patented product and prevents use by
any others for specified time in country granted

- trademarks, service marks give owner exclusive

right to use, sell or license a symbol and prevents
anyone from use of identical or similar mark for
specified period in country granted

- industrial design patents prevent unauthorized

copy, imitation or sale
 - trade secrets/know-how are not patentable and
covered by national trade secrecy or contract laws
i.e.- protection against disclosure by employees or
licensees based on contracts. No international
treaties

- copyrights - use of artistic work, computer

program i.e. copy, distribute, perform, broadcast,
lawful only with permission of author/owner of
copyright

- neighbouring rights - similar to copyrights that

protect new technologies e.g. integrated circuits

2/ International Organizations:

World Intellectual Property Organization (WIPO):

- UN agency, formed 1967, in Geneva, with 177

members, administers 21 IP treaties

- legal and policy advisor to WTO on TRIPS

related issues and dispute settlement

- WIPO Arbitration Centre:

- resolves private IP commercial disputes

- offers mediation and arbitration

WTO:
 - Agreement on Trade-Related Aspects of
Intellectual Property (TRIPS)

- overcame problems of existing treaties:

- established minimum standards

- extended IP coverage worldwide

of major existing IP treaties

- dispute settlement system

A Closer Look at Patents, Trademarks and Copyrights

A/ Patents:

International Patent Treaties:

1/ Paris Convention for Protection of

Industrial Property, 1883 - 100+
members

- must file in each member country

but right of priority

- national treatment

- common rules - minimum standards

2/ Patent Cooperation Treaty (PCT), 1970

 - can file for “international patent”
simultaneously in many countries

- 4 step process
1/ file in member country
(Canada - PCT Office, Hull, PQ)

2/ international search re problems

(Canada - European Patent Office)

3/ international search report

4/ application process - 20 months

3/ TRIPS:

- WTO members must comply with Paris

Convention

- minimum 20 year patent protection

- almost all technology patentable

with exceptions (security, morality,
medical techniques, biological processes)

- rules for compulsory licensing

National Systems:
 Canada - medium protection until recently
(forced by WTO and PCT to comply
re drugs and length of patent
protection)

- Canadian Patent Act, 1989

- “first to file” system but only inventor

entitled to patent

- “absolute novelty” required

- annual maintenance fees

- up to 7 year deferred examination

- Canadian Patent Office, Ottawa/Hull

U.S. - not PCT member

- “first-to invent” system (litigious)

- uses trade sanctions to force IP

compliance e.g. China

E.U. - different national laws

 - harmonization in progress through
European Patent Convention and
Community Patent Convention

- 2 application options:
- apply for national patents in
individual countries (expensive,
lengthy)

- apply to European Patent Office,

Munich

B/ Trademarks:

International Trademark Treaties:

1/ Paris Convention - 1883

2/ Madrid Agreement- 1891, 1989

- 37 members only

- allows an applicant to make a single

application with WIPO that is equivalent
to filing in all member states

3/ TRIPS
- defines eligible trademarks, minimum
rights, duration, licensing rules
National Systems:
 - most countries, need to register mark in
patent office

- indefinite duration, renewals every 10-15

years

- mark can be registered whether or not in

commercial use ( except Canada)

- famous trademarks (McDonalds, IBM) may

not have to be registered in every country
since internationally recognized

- trademark protection can lapse in some

countries if not used within first few years
of registration

- trademarks not allowed if:

- confused with existing trademarks

- represents deceptive promotion/labelling

- primarily a surname

- uses any national symbol (flag, crest)

Canada - registration only if prior use

 - duration indefinite, 15 year renewals

U.S. - registration based on intention to use

mark and must be used within 6
months

- abandoned if not used in first 2 years

- duration indefinite, 10 year renewals

E.U. - harmonized system - “community

trademark” , Office for
Harmonization

C/ Copyrights:

International Treaties:

1/ Berne Convention for the Protection of

Literary and Artistic Works, 1887

- 80+ members ( Canada, US,)

- national treatment

- unconditional protection on completion

- protection granted to any person

- common rules - minimum standards

2/ Rome Convention, 1961:
 - prohibits unauthorized:

- recording of live performances

- reproduction of recordings

- rebroadcast of broadcasts

- broadcasters must pay fees for records

3/ TRIPS:

- WTO members must comply with Berne

Convention

- computer programs, databases covered

as literary works

- integrated circuits covered

- updates Rome Convention

National Systems:

Canada: - Copyright Act

- duration -50 years after author’s death