Intellectual Property

What is Intellectual Property?

Intellectual Property (IP) refers to ideas and intellectual creations, for which a set of exclusive rights are recognized under the corresponding fields of law. Common types of intellectual property rights include trademarks, patents, copyright, and industrial design.

How can IP become a support for the economic development and strategic mission of a company?

Intellectual property law is a tool for the protection and promotion of inventions. It’s a way to bring added-value to innovation, and allows business to target and secure markets. Innovation becomes an asset for any business, as it can become the object of licensing contracts, thus generating revenue.  Ultimately, innovation (be it patent, trademark, etc.) adds value to the company and facilitates the demand for funds or capital investment. A company with a well-integrated intellectual property strategy will be perceived as a serious innovator in the market place.  Moreover, the exclusivity derived from its intellectual property portfolio becomes a competitive advantage in the marketplace. All of these elements combined illustrate how your ideas can be turned into assets on your balance sheet!

Patents

Patented

What is a patent?

A patent is a type of intellectual property. A patent does not confer the right to exploit an invention. Rather it confers a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. Patents cover new inventions (process, machine, manufacture, composition of matter) or any new and useful improvement over an existing invention. To be patentable, the invention must respect three essential criteria: Novelty: the invention must be novel; Ingenuity: the invention must be a development or an improvement that would not have been obvious beforehand to persons of ordinary skill in the art in the technology involved; Utility: a patent can only be obtained for something that has a useful function.

Why apply for a patent?

Patents are granted to the first inventor to file an application.  It is thus critically important to file a patent application as soon as practically possible. A patent also reinforces the value of your company. It is a financial asset that can be sold or licensed.

Who can apply for a patent?

It is highly recommended to use the services of a patent agent registered with the Canadian Intellectual Property Office (CIPO). Preparing and filing a patent application is a complex process. Registered agents have the experience and the business know-how to make sure your application is drafted in a way that best protects your invention from a commercial standpoint. BENOÎT & CÔTÉ is a registered agency with CIPO. We will help you apply and better understand the importance of your intellectual property portfolio in your business strategy.

What is the duration of a patent in Canada?

The term of a patent is 20 years from the filing date of the application, subject to the payment of annual maintenance fees.

What countries are covered by my patent application?

The person filing a patent application decides on the individual countries in which he/she would like to have the invention protected. BENOÎT & CÔTÉ has associates in every country in the world to file in any country on your behalf. Likewise, we can also discuss preparation and filing of an application under the provisions of the Patent Cooperation Treaty (PCT) to preserve your right to file in any of approximately 180 member countries around the world

What are the steps involved in obtaining a patent in Canada?

Filing a patentable invention involves many steps: A preliminary patentability search of the prior art; Writing and filing of the patent application to be filed at CIPO (this comprises an abstract, a specification including a set of claims and often drawings); Requesting examination of the application within 5 years of the filing of the application; Prosecuting the application with CIPO (responding to objections raised by the Canadian examiner in charge of your application); and Paying annual Maintenance Fees.

What is a provisional patent application and can one be filed in Canada?

There is no provisional patent application in Canada. The provisional application, under United States patent law, is a legal document filed in the United States Patent and Trademark Office (USPTO) that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. During this period, it is neither published nor examined.  A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented). The filing of a provisional application allows the applicant to evaluate the market and the value of the invention before fully investing in the regular application process.

How does a patent add value to my company?

The owner of a patent can implement it into the company’s business strategy and use it as a financial asset. Furthermore, a patent can be either sold or licensed. In terms of marketing and image, a patent allows the company to highlight its innovative practices. BENOÎT & CÔTÉ will help turn your ideas into assets on your balance sheet.

What is a licensed patent and what are the advantages?

Patent licensing agreements are contracts in which the patent owner (the licensor) agrees to grant the licensee the right to make, use, sell, and/or import the claimed invention, usually in return for a royalty or other compensation. This allows a company to expand to other markets through licensing and partnerships. These partnerships can then form the basis for further research aimed at developing novel innovative products or aimed at improving already existing products, all the while maintaining the intellectual rights to the invention.

Plant breeder’s rights

What are Plant Breeders’ Rights?

Plant Breeders’ Rights (PBR) are a form of intellectual property rights by which plant breeders can protect their new varieties in the same way an inventor protects a new invention with a patent. The holder of PBR obtains exclusive rights in relation to the propagating material of their variety. The holder is then able to protect the variety from exploitation by others.  Algae and mushrooms are exempt.

Why apply for Plant Breeders’ Rights?

Plant Breeders’ Rights (PBR) give owners exclusive rights on new varieties of vegetation. To receive protection, the variety must be new (never-before-sold and different from other varieties), homogenous (all plants of the variety must be identical) and stable (each subsequent generation must be identical to the last).

What is the duration of Plant Breeders’ Rights in Canada?

The owner of Plant Breeders’ Rights (PBR) is authorized to control the reproductive material and sale for a period of 18 years.

What are the steps involved in obtaining Plant Breeders’ Rights in Canada?

A demand for the variety is filed with Agriculture Canada. Agriculture Canada will then examine the variety and publish it in the Plant Varieties Journal resulting in a six month period for other parties to oppose the demand. Once accepted, Agriculture Canada will issue a certificate granting an exclusive right for a period of 18 years. The certificate can be transferred, sold or licensed as desired. It is useful to note that all other parties have the right to reproduce, conserve or cultivate the variety(s) for private use without requiring authorization, but cannot derive commercial benefit therefrom.

Industrial designs

Why register an industrial design?

Registering an industrial design gives its creators exclusive rights to the design. There is no protection without registration. Registration prevents competitors from using such a design for commercial ends, or to sell, rent or showcase a registered design or similar design.

What is an industrial design?

Industrial designs are about how things look. More technically speaking, they are the visual features of shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article. The design must possess characteristics that are visually captivating. To be registered, the design must be original.

Who can register an industrial design?

The owner of a design (usually the one who has created it, or the person who has contracted out the work for such a design) can register directly. It is highly recommended to consult with a licensed patent/trademark agent or lawyer before preparing an application to ensure that the application is in conformity with the guidelines set out by the Canadian Intellectual Property Office (CIPO).

BENOÎT & CÔTÉ has the experience required to help in your industrial design application process.

How long does a registered industrial design last?

The lifetime is currently 10 years after the registration date. However a Maintenance fee must be paid before the fifth anniversary of the registration date.

If I register my design in Canada, am I protected in other countries?

Industrial design registration is the purview of each country. A separate application must thus be filed in each country in which the owner wishes protection for the design.

What are the steps involved in registering an industrial design?

Before applying for an Industrial design certificate, it is recommended to verify whether or not the design is truly new and original.  Once done, an Application for the Registration of an Industrial Design (consisting of three elements: a duly completed Application form at least one drawing or photograph of the design, and the required fees) is filed with the Canadian Intellectual Property Office (CIPO); Initial processing and classification of the design by CIPO; Preliminary examination of the Industrial design application by an examiner; Official examination of the description, drawings or photographs to ensure they comply with the rules and regulations; Possibly responding to objections raised by the Canadian examiner in charge of your application; and finally registration and receipt of the official Certificate of Registration.

Copyright

What is a copyright?

Copyright is a legal right granting the creator of an original work exclusive rights for its use and distribution (the right to copy). Only the owner of the copyright, often the creator of the original work, has the right to produce or reproduce the work or to permit anyone else to do so.

What is covered by copyright?

Copyright applies to all original literary, dramatic, musical and artistic works. The word “original” is key in defining a work that qualifies for copyright protection. Also included are performances, sound recordings and communication signals.

Why apply for a copyright?

As of its creation, all original work is automatically under copyright protection. However, applying with the Copyright Office allows you to receive a certificate which can be used to your advantage in the event that your work is infringed.

Who can register a copyright?

Any person can register a copyright with the Copyright Office in Canada. However, the rules and regulations can differ depending on the type of work or whether the applicant is a single person, a group of people or a company. We thus recommend you consult with a trademark agent or lawyer before applying for copyright.

BENOÎT & CÔTÉ is an invaluable partner in this respect given our solid experience in all matters Intellectual Property.

How long is copyright valid in Canada?

The duration of a copyright spans the author’s life plus 50 years (that is, copyright typically expires 50 years after the author dies). The work then falls into public domain. There are some exceptions, for example: photography, film, sound recordings, communication signals, Crown copyrights, collaborative works or posthumous works.

Is the copyright of a Canadian author valid in foreign countries?

Yes, as long as the country in question belongs to one or more of the international copyright treaties, conventions or organizations. These include the Berne Convention, the Universal Copyright Convention, the Rome Convention, and members of the World Trade Organization. Most countries do belong to one of the above.

What are the steps involved in applying for a copyright?

To register a copyright, a completed Registration Form is sent to the Copyright Office after which the Office will review it and possibly propose modifications. Once these are met, a certification will be sent to the author of the work.

Trademarks

What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the goods or services of one party from those of others.

Why should you register your trademark?

Registration of trademarks is proof of ownership; it gives its owner exclusive rights to use the mark in a specific territory, and protects the owner from counterfeiters. A registered trademark is a prerequisite for franchising a business. A registered trademark has been approved when entered on the trademarks register held by the trademarks office.

Who can register a trademark?

Individuals, companies, and lawful associations can register a trademark, provided they meet the requirements of the Trademark Act. A registered trademark agent can save you time and money and can be an invaluable source of help and guidance.

BENOÎT & CÔTÉ is experienced in the registration of trademarks. Our lawyers and agents will be of great assistance to you, be it for submitting a strong initial application, strategic planning to maximize the value of your trademark or for issues of law.

How long is my registration valid?

A Canadian trademark registration is valid for a period of 15 years, and can be renewed upon payment of the renewal fee for successive 15 year terms indefinitely.

Does registration in my country protect my rights in other countries?

The Canadian registration only protects your rights in Canada. Consideration should be given to applying for registration in each country in which you intend to sell the goods/services.

BENOÎT & CÔTÉ will help you complete the necessary steps for registration in foreign countries thanks to our extensive network of international associates.

What are the steps for trademark registration?

Trademark registration usually involves

  • A search of existing trademarks (ask your agent)
  • Completing and filing an application
  • An examination of your application by the trademark office
  • Publishing of the application in the local trademarks journal
  • Opposition period to the registration of the trademark
  • Allowance and registration (if there is no opposition) and
  • Protecting your trademark once registered (ask your agent)

How can registering a trademark help my company’s profitability?

A trademark is one of the most valuable assets of your company. It is the most powerful and most economic vehicle through which you can propagate your brand. For the consumer, it helps to identify your business, and also acts as an assurance of quality. It helps distinguish your business from the competition. Moreover, your trademark is a financial asset. It can be sold or licensed.

BENOÎT & CÔTÉ will help turn your ideas into assets on your balance sheet.

What is a trademark licensing agreement?

Trademarks are commonly licensed, to permit parties other than the owner to use the trademark in certain circumstances. Most franchise agreements, for instance, include a trademark license. It is extremely important the trademark owner retain some control over the use of the trademark by the licensee by imposing some standards. A trademark license typically contains provisions as pertaining to the territory where the licensee may use the trademark; the goods and/or services that the licensee may offer under the trademark; the duration of the license; whether the license is exclusive; and the quality of the goods and/or services the licensee may offer under the trademark. A license provides the trademark owner with an opportunity to generate new revenues and increase its visibility.

Integrated circuit topographies

What is an integrated circuit topography?

ICTs refer to the three-dimensional configurations of electronic circuits in integrated circuit products or layout designs. ICTs are everywhere and are at the heart of modern technology: communications, entertainment, manufacturing, medical and space technologies, and also in items such as ordinary household applications.

Why register an integrated circuit topography?

If you are the manufacturer or creator of integrated circuits, you will receive protection and exclusive rights to the production and reproduction of the topography, as well as the commercialization of circuits. This confers an added protection to a patent you may hold for the circuit itself.

Who can register an integrated circuit topography?

The owner of the topography (who may be the creator or, where the topography has been transferred, the successor in title) may apply. If the circuit was created in the context of a work contract, the employer may be considered the owner of the topography and benefit from the protection.

How long does the registration last?

An ICT is protected up to ten years from the filing date of the application for registration. The term ends on December 31st of the tenth year after the year of first commercial exploitation, or the tenth anniversary of the filing date.

What countries are covered by an ICT registration?

As protection for integrated circuit topographies is done at a national level, you must register in every country in which you seek protection.

What are the steps involved in registering an ICT in Canada?

To receive a registered ICT, a request, along with copies and a description of the function and nature of the circuit is filed with the Canadian Intellectual Property Office (CIPO).  CIPO does not perform an in-depth examination of the request, but may reject the request if the applicant does not satisfy the admissibility requirements, or if the object of the registration was commercially exploited more than two years before the filing date. If all requirements are met, the applicant will receive an official certificate.