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IP Primer

Intellectual property (IP) refers to creations of the mind, hence the term intellectual property. There are five main types of intellectual property: copyrights, industrial designs, patents, trade-marks and trade secrets. This section provides a brief overview of those forms of intellectual property as defined by Canadian law.

Copyrights

Copyright is the exclusive right given to an author of an original work to copy, publish or perform that work. Works that may be eligible for copyright protection include:

  • Architecture.
  • Artwork, such as a photograph or painting.
  • Books and articles.
  • Computer software.
  • Movies.
  • Music, plays or songs, and performances of those works.
  • Radio and television broadcasts.

In Canada, the term of copyright protection depends on the type of work, whether the author's identity is known, and whether the work was created by one or more authors. For most works, the term of copyright in Canada is calculated as follows:

The lifetime of the author + The end of the calendar year in which the author died + 50 years after the year the author died.

Industrial Designs

An industrial design is defined by Canadian law as "features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye." While part of the article can be functional, the design cannot be wholly or only functional. Examples of well known industrial designs include the shape of the iPod portable electronic multi-media player and the iconic COCA-COLA bottle.

In Canada, an industrial design registration is initially granted for a five (5) year term, and many be renewed for a second five (5) year term upon payment of the applicable fee.

Patents

A patent is the exclusive right, granted by a government, to exclude others from making, using, or selling an invention. A patent may protect a new invention (e.g. a process, machine or chemical) or any new and useful improvement of an existing invention. In order to be patentable, an invention must possess the following characteristics:

  • Patentable subject matter: The definition of patentable subject matter in Canadian law includes chemicals and pharmaceuticals, machinery, and methods of manufacture or production. The definition excludes higher life forms such as mammals, but does include genes and cells even though these components may be constituents of a non-patentable life form. Non-patentable subject matter includes methods of medical treatment.
  • Novel: The invention must be the first of its kind in the world.
  • Useful: A patent cannot be obtained for an invention that does not work or have a useful function.
  • Ingenuity: The invention must be a development or an improvement that would not have been previously obvious to a person of average skill in the relevant technology.

While one may obtain a patent for an improvement upon an existing invention, it is possible that the existing patent may still be in force. If so, manufacturing or marketing the improvement may constitute patent infringement without the appropriate license agreements.

In Canada, the term of a patent issued from an application filed on or after October 1, 1989 is 20 years from the patent application's filing date. This term is subject, however, to the timely payment of annual maintenance fees required to maintain the patent in good standing.

Trade-marks

A trade-mark is an indicator of source, such as a slogan or logo, which distinguishes one business' products and/or services from those of another business.

When selecting a trade-mark, it is advisable to avoid a mark that is:

  • Clearly descriptive or misdescriptive of the qualities of the products and/or services associated with your business.
  • Is a geographic name or common surname.
  • Is identical or confusingly similar to another business' trade-mark for the same or related products and/or services.

In Canada, trade-mark rights can be the subject of unregistered (a.k.a. common law) or registered rights. Common law trade-mark rights are limited to the geographic areas in which the mark has been used and/or made known. In contrast, registered trade-mark rights give the owner the exclusive right to use the trade-mark across Canada, regardless of whether the trade-mark is used only in a limited geographic area in Canada.

Unlike other forms of intellectual property, trade-mark rights, whether common law or registered rights, are acquired and maintained by use. Abandoning use of a trade-mark may result in a loss of trade-mark rights, including registered, absent acceptable excuses for non-use. Similarly, material changes to a mark may result in a loss of trade-mark rights.

A Canadian trade-mark registration is valid for 15 years from the date of registration, and may be renewed for perpetual terms of 15 years.

Trade Secrets

Canadian law has yet to provide a precise definition of what constitutes a trade secret. However, it is generally accepted that a trade secret is information including but not limited to a formula, pattern, compilation, program, method, technique, or process, or information contained or embodied in a product devise or mechanism which:

  • is, or may be used in a trade or business,
  • is not generally known in the trade or business,
  • has economic value from not being generally known, and
  • is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Famous trade secret examples include the KENTUCKY FRIED CHICKEN seasoning recipe and the COCA-COLA formula.