Protecting Your Discoveries - Intellectual Property Basics
What do we mean by Intellectual Property?
Intellectual property is a common term used to describe the products of the human intellect often expressing new knowledge that someone has created or discovered. Such expressions may also deal with artistic matter such as music or art or literature. IP, as it is often referred to, can be protected in various ways depending on the subject matter. The following sections describe some of the most common forms of protection used in Canada and in many other countries.
- Industrial Design Registration
- Plant Breeders Rights
- Canadian Plant Variety Registration System
- Integrated Chip Topography
- Know how and Trade Secrets
What is a patent?
A patent is a right to prevent others from making, using or selling the invention defined by the “claims” of the patent.
What can be patented?
Patents protect “inventions”, which are defined as any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement thereof. Generally, patents are for functional features of new products, machines, manufacturing processes, software, chemical compositions, etc. - as opposed to features which are merely aesthetic (which may be protected by industrial design registrations, or “design patents”, as they are called in the United States). Higher life forms modified by man are patentable in the United States but not in Canada.
In order to be patentable in Canada, assuming that proper subject matter is involved, the invention must meet three main requirements: utility, novelty, and inventiveness.
The utility requirement simply means that the invention must have a practical purpose, and it must be capable of working for that purpose. There must also be sufficient disclosure of the invention in the patent application to enable someone knowledgeable in the field of the invention to reproduce the invention after the patent has expired, using only ordinary skill.
The “novelty” requirement is that the invention must be new, i.e. it must not have been previously known, either in the marketplace or in previous patents, textbooks or other documents. Complexity is not a requirement. In fact, often the best inventions are those that simplify something previously known. Nor does the invention necessarily have to constitute a major technical breakthrough, as long as there is something arguably novel and inventive about it. It is important to understand that one’s own actions can destroy novelty. Most countries ( Canada, the United States and Mexico being the main exceptions) will not allow patents if the initial application is filed after a sale or public disclosure of the invention.
Canada and the United States have grace periods that allow filing up to one year after sale or public disclosure, but relying on the grace period means forfeiting protection outside North America which can for some technologies like pharmaceuticals be problematic. The cost for taking a new drug from lab bench to bedside is tremendous and so pharmaceutical companies will generally want to access and have patent protection on a global basis to give them as large a market as possible.
The invention must also have at least some degree of ingenuity. It cannot be merely a variation on something that is not new and which would be obvious to someone with average skill in the art.
Deadlines and strategies
If patent protection is desired, then an application should be filed in at least one country before any sale, commercial use or public disclosure of the invention. (See the preceding paragraph.) If the initial application is filed before sale or public disclosure, then an international treaty commonly referred to as the “Paris Convention” permits applications in other countries to be filed up to one year later, regardless of any intervening sales or public disclosures. There are very few countries which are not Paris Convention signatories, perhaps the most notable one being Taiwan. In such countries, applications must generally be filed before any sales or public disclosures anywhere. The most common patenting strategy is to file in only one country initially and to then use the above-mentioned “Paris Convention” year to evaluate the market and then decide on the desirability of filing in other countries.
In cases where immediate protection is not needed, but where right to obtain protection needs to be preserved immediately and at minimum expense, filing a provisional United States patent application is sometimes used. However, to preserve that right one must follow up with formal application within one year. This strategy can cost more in the long run, and is not without other disadvantages, but can be very useful if used cautiously.
Term of protection
In Canada, patent protection begins when the patent is granted, and ends 20 years after the date the application was filed. When the patent is granted, there is some retroactivity, in that reasonable compensation for damages resulting from any unauthorized use of the invention after “laying open” of the application can be claimed. (Applications are “laid open” for public inspection 18 months after the first filing date anywhere, or earlier upon request.)
A patent search, which is highly advisable but not mandatory, can cost from several hundred to several thousand dollars. Costs for preparing, filing prosecuting a patent application and for granting fees vary widely from case to case, and are very difficult or impossible to predict accurately in advance. However, in the “average” case, start-to-finish costs to cover both Canada and the United States, exclusive of maintenance fees, are typically in the $15,000 to $20,000 range. “World Wide” patent protection can be expected to cost hundreds of thousands of dollars.
Deciding on patenting
Spending money on patents can be a great waste, or a great benefit! In each case, one must assess whether or not spending the money is justifiable in terms of the anticipated market for the invention. Patents generally do not make sense unless there is a large, long-term market for the invention. On the other hand, failing to patent an invention can sometimes be fatal to a business, if for example the invention is copied by a lower-cost competitor shortly after showing signs of becoming successful.
An inventor is a person who has had an original idea or has contributed intellectual input to one of the main claims of the patent. A patent application may be filed naming one or more inventors.
Professional collaborators may or may not contribute to the inventive concept being claimed and great care should be taken in deciding who should be named as an inventor. It is important to understand that inventorship is a legal matter, not a collegial matter – not all co-authors of a publication are necessarily co-inventors. The term “inventor” has a specific legal meaning and excluding an inventor or including someone as an inventor who does not fit the legal definition can invalidate a patent. Inventorship for patent purposes is different than authorship for publication purposes. If there is any doubt as to who should or should not be considered an inventor, it is important to discuss this with the Industry Liaison Office so that it can provide advice and/or seek a professional opinion if necessary. Guidance on how to determine who is an inventor is provided in the following paragraphs.
An inventor is someone who has come up with the idea behind, or contributed intellectually to, one or more aspects of the invention as defined in the claims. The inventor does not have to be the person who put the idea into practice. For example, suppose Dr. X came up with an idea for a ray gun. If Dr. X conceived of the ray gun, drew up plans, and asked Technician Y to make the ray gun following those plans; and technician Y did so without making any modifications to the plans, then Dr. X would be the sole inventor of the ray gun. However, if Technician Y found that s/he had to make some modification(s) for the ray gun to work, and came up with the idea for the modification(s) his/herself, then Dr. X and technician Y would be co-inventors of the modified working ray gun.
Conversely, if a graduate student, postdoctoral fellow, technician, etc. independently came up with an idea and put it into practice without any intellectual or creative input from their supervisor or colleagues, s/he would be considered the sole inventor. Providing resources and funding does not bestow inventorship. To be an inventor you must have made a creative or intellectual contribution to the conception of the invention.
Please note that a person should also not be considered an inventor if their only contribution(s) to the claimed invention were already known in the prior art (i.e. the body of literature in the field). For example, people who are co-inventors on an earlier patent application are not automatically considered to be co-inventors on all future patent applications that build on the earlier application. If only a subset of the previous inventors was involved in conceiving the improvements or advancements that are the subject of the new patent application, then only that subset should be listed as inventors on the new application.
Finally, it is important to note that financial matters and inventorship can be handled separately. It is possible to distribute revenues to people who are not listed as inventors on the patent application, provided the interested parties have come to an agreement as to how the revenues should be divided. This type of agreement should be made early in the commercialization process, ideally before any patent application is filed.
In summary, a person who works under the direction of another and does not contribute any original thought to the claimed invention; for example, “works as a technician” to confirm an invention, cannot and must not be named as an inventor. Getting inventorship correct is essential to the legal validity of a resulting patent. Collaborators not deemed to be co-inventors can however be recognized through some sharing of the net proceeds of the invention. Naming someone as an inventor because they are a department head or a supervisor is not correct just as omitting someone because they are no longer at the university or because they are a student is not correct. The Industry Liaison Office should be consulted on inventorship matters and in some complex cases a professional opinion will need to be obtained.
What is copyright and what is protected?
Intellectual property that is the expression of artistic matter such as music or art or literature or the software coding expression of ideas that represent computer programs are most commonly protected through the copyright act. Copyright protects the form or expression of ideas or concepts rather than the idea itself in contrast to a patent which protects the idea or concept rather than the form. Copyright gives the creator, or whomever the creator has given rights to, the right to reproduce a work.
In Canada there is a concept of moral rights which entitles the author to prevent others from modifying their work in a manner that is prejudicial to the author’s honour or reputation. Therefore in dealing with the transfer of copyrighted software to someone for commercial exploitation it is almost always a necessity to obtain from the authors a waiver of moral right so that software can be further modified, for example inclusion as part of a larger software package or porting to another language or the addition of a user interface. Moral rights cannot be licensed or assigned to another party. They must be simply waived through a legal waiver agreement.
Copyright protection in Canada occurs as soon as the creator creates or author puts pen to paper or finger to the keyboard. Registration of copyright can be done through the Canadian Intellectual Property Office, CIPO, but this is not a requirement. Registration may provide better legal evidence of the author rights should there be an infringement action and so may lead to better recovery of penalties from infringers. Since Canada belongs to the Berne Convention and Universal Copyright Convention copyright protection in Canada extends protection to other member countries although the term of protection will vary. Whether registered or not it is advisable to put the public on notice that the creator is claiming copyright protection by marking all copies with a copyright notice such as © along with the year and name of creator. A statement to the effect “All rights reserved” is also sometimes used.
Term of Protection
In Canada copyright protection lasts for the life of the creator/author plus 50 years.
Implications for Academic Researchers
In many cases of software development code is written by many authors including students and so a finished work ends up with a multitude of authors. Therefore it is strongly advised that assignment of rights and waiver of moral rights be obtained at the start of a project not after it is done. In the case of employees this is often done through an employment agreement and with consultants through a contract in which the rights to the copyrighted material rest with whoever has hired the consultant.
It is also important to recognize that there is much freeware available on the net and incorporating software obtained in this fashion may have major restrictions on what you can do with the resulting program or product.
What is trademark and what is protected?
A trademark provides the owner with the exclusive right to use a mark on specific goods or services and to prevent others from using confusingly similar marks. A mark can consist of words, numbers, symbols or designs but cannot be simply a description of the goods or services. A trademark most often is used to signify a certain level of quality that customers identify with the mark and this is where the value lies. Trademarks such as those of a university can be licensed and they can be licensed in combination with other IP such as patented technology to form an even more valuable package.
Trademark protection in Canada is obtained through a national registration with the Canadian Intellectual Property Office. A search is required to ensure that there is no similar or identical mark already registered. One can designate a registered mark with ®.
Term of Protection
Trademark protection can last indefinitely so long as the mark is in active use.
What constitutes an Industrial Design?
Industrial design protection covers the appearance, ornamentation, pattern, orientation, shape or combination of these features of a product and are judged by the appeal to the eye. Such protection under the Industrial Design Act does not apply to colour or to functional features. Examples of protectable matter might a silverware pattern, the classic Coke bottle. The design must be unique in order to be registered. Protection lasts for 10 years from date of registration and excludes others from using the design during this period of time. Registration must be filed within one year of publication which means available to the public anywhere in the world. Publication can take the form of sales, advertising, exhibition.
Such protection is seldom applicable for university IP.
What are Plant Breeders’ Rights and what is protected?
Plant Breeders’ Rights give the owner of the rights exclusive right to produce and sell propagating material for the particular plant variety covered. It also gives the owner the exclusive right to use the denomination or trade name approved during the registration. There are two exceptions allowed under this act. Growers who propagate a registered variety under the authority or license from the owner can use progeny seed for their own re-seeding (farmer’s privilege and bin run seed) but are prohibited from selling to others. Also the act provides for free use to third parties for research purposes.
The owner of these rights can also license rights to third parties. Infringers may be sued under the Act.
The purpose of these rights is to promote the development of plant varieties with enhanced characteristics such as yield, disease resistance, etc. which ultimately results in higher returns for those growing these varieties. It also encourages exchanges of germplasm between researchers or breeders as it protects the investment in time and money of the breeder.
Registration in Canada is under the Plant Breeders’ Rights Act (C-15). Application and approval are based on demonstrated distinguishing features, novelty, variety stability and the registrant’s ability to maintain publicly available propagating material. Sales of the propagating material prior to filing for approval under the act may disallow registration. Fees for each step of filing, examination, issuance and annual maintenance are charged but are relatively inexpensive compared to patenting. Canada belongs to the UPOV Convention resulting in reciprocal recognition of protected varieties in member countries.
In the United States unique plant varieties can also be protected by filing a plant patent application although this applies only to plants that reproduce vegetatively.
Term of Protection
In Canada protection lasts for eighteen years.
This system is operated by Canadian Food Inspection Agency. The procedure for registering varieties differs depending on the variety. The process involves various steps of evaluating new varieties including comparison with standard varieties. Evaluation focuses on agronomic characteristics such as time to maturity, straw strength, yield, on resistance to diseases like fusarium, rust, smut and on quality testing such as malting for certain barleys. After success on smaller scale plots larger plots are used to do more testing. Ultimately committees, in which various breeders and growers participate, decide by vote which new varieties will be put forward for registration. A data package on such a variety is then submitted to CFIA for review and approval. Fees are involved in such registrations. Once approved the breeder of record is responsible for maintaining a reasonable supply of breeder quality seed from which commercial quality seed is ultimately grown.
Canadian legislation allows for creators and owners of unique designs for integrated circuits/chips to be registered. These designs are complex and typically three dimensional showing the various layers of the chip. Registration requires the creator or owner to provide details drawings of their design in return for protection from imitators. This form of IP protection is seldom used as the detailed designs once registered are then available for competitors to see. Instead most opt for protection through the trade secret route.
What is Know How and a Trade Secret and what is protected?
Know how often takes the form of knowledge about how to do something. A researcher might invent a patentable process and considerable knowledge about how to optimize and implement such a process. Although patenting requires disclosure of enough detail to allow those of normal skill in the art to reproduce the invention there is often know how which is not patentable and need not be contained in the patent application. Such know how can have significant commercial value to the licensee of a patented or unpatented invention and can be part of a license agreement. Such know how is typically protected as a trade secret. A trade secret is essentially an agreement between parties to keep some particular information or knowledge secret. This is often used in industry when a company does not want to register the knowledge under some statutory protection act so as to keep the public and its competitors unaware. This form of protection is often used between a company and its employees and is implemented as a confidential disclosure agreement or an employment agreement containing appropriate provisions. There are some limitations to trade secret protection in that the information if leaked by one of the parties can become public and anyone then can use the information without fear of being sued. The only party that can be sued is the one disclosing the information not those receiving it.
The classic example of trade secret protection is the formula for Coca Cola.
Universities seldom use trade secret protection because of the need to publish research results.