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Script 231 gives information only, not legal advice. If you have a legal problem or need legal advice, you should speak to a lawyer. For the name of a lawyer to consult, call Lawyer Referral at 604.687.3221 in the lower mainland or 1.800.663.1919 elsewhere in British Columbia.
Inventors, designers, entrepreneurs, writers and other creative people are often interested in protecting their ideas and business inventions. But how do you protect a new invention, or the brand name of a product, or the words of a song? Through patents, industrial designs, trademarks and copyright. This script discusses these forms of what the law calls “intellectual property,” starting with patents.
What is a patent?
Suppose that a company, National Mousetrap Corporation, has developed a new and better mousetrap. To protect that invention, it would apply for a patent.
A patent is essentially a contract between an inventor and the federal government. The government gives you, the inventor, the right to prevent others from making, selling or using your invention in Canada for the life of the patent. In return, you share the technological information behind your invention, so that other Canadians can benefit from and build on this knowledge.
How do you get a patent?
You must submit a patent application, along with the appropriate fee, to the Patent Office of the Canadian Intellectual Property Office (CIPO) in Hull, Quebec. (CIPO’s address and website is given at the end of this script.) Your application must describe your invention in full and demonstrate that it is new, useful, and has inventive ingenuity.
But your application isn’t automatically looked at. Within five years, you must formally ask that your application be considered and pay the prescribed fee. Approximately two years after you’ve paid this Request for Examination fee, a government patent examiner familiar with the subject matter in question will examine your application. If the examiner has any objections to the application, they will issue an office action explaining why the application is being rejected. The inventor (or patent agent hired by the inventor) must then respond within the prescribed time frame by submitting arguments and/or amendments in support of their patent application. The examination process itself can take one to four or more years, and after that, if your application is approved, you’ll receive your patent.
How long does a patent last for?
The life of a patent is 20 years from the time you first submitted your patent application. To keep your patent alive, you must pay annual government maintenance fees.
A patent application is a complicated process
Most applicants therefore hire a registered patent agent or patent lawyer to help them. You can get a list of registered patent agents by writing to the Patent Office at CIPO, or by looking in the Yellow Pages of your phone directory.
Time is of the essence
If you’re concerned about a competitor being on the same track, you’ll want to submit your patent application for your invention as soon as possible. In Canada and most other countries other than the US, the person who applies first to the Patent Office is given the patent over another applicant who applies later claiming the same invention. This is true even if the second applicant can prove that they invented the same product before you did.
What is an industrial design?
Returning to the mousetrap example, pretend that the company has also designed its mousetrap so that it has an attractive appearance that appeals to consumers. But the company is worried that a competitor might soon copy the attractive look and visual design of the mousetrap. To protect the design, the company would apply for an industrial design.
An industrial design protects the shape or ornamental appearance of a product. Examples include the shape of a table, the pattern of a fabric, the visual design of a computer keyboard, and the decoration on the handle of a spoon.
You must apply to register an industrial design
You must do this within one year after the design, or an article showing the design, has first been publicly used, displayed or sold. Registration protects an industrial design for 10 years, but a maintenance fee must be paid after five years.
What about trademarks?
Now suppose that the company, National Mousetrap Corporation, has also developed a catchy name to brand the product and/or a distinctive logo to use on the boxes in which the mousetraps are sold and in magazine ads promoting its mousetraps. To prevent competitors from using the same logo and/or name, it would apply for trademark registration. (Copyright protection for the logo may also be available, discussed later.)
What is a trademark?
A trademark is a word, logo, symbol or design (or a combination of these) used to distinguish a product or service. The red “K” on a box of Kellogg’s Cornflakes, and the alligator on Lacoste t-shirts, are familiar examples of trademarks.
How do you protect a trademark?
To register a trademark, you must submit a trademark application to the Trademarks Office of CIPO in Hull, Quebec. You may file a trademark application on the basis of use (i.e., you have already started using the trademark in association with your business) or on the basis of proposed use (i.e., you intend to use the trademark in the near future, but you haven’t yet started using it). After examination and publication of your trademark, and if no one opposes it, your trademark will be registered.
As with patent applications, the application process is tricky and complex, so it’s best that you hire a trademark agent to do it for you. You can get a list of agents from the Trademarks Office at the Canadian Intellectual Property Office, or by looking in the Yellow Pages of your phone book.
Registering a trademark isn’t essential, but can be helpful
While you don’t have to register a trademark to use it, registration gives you the exclusive right to use your trademark throughout Canada for 15 years. You can also renew your trademark every 15 years as long as you continue to use the trademark in your business. On the other hand, an unregistered trademark can only be protected in those places where you can prove the trademark is known and has an established reputation.
What about copyright?
Suppose that the mousetrap company is ready to launch an advertising campaign. Its advertising department has created a brilliant script for a TV commercial. The law of copyright and copyright registration would protect the ownership of the script.
What does copyright mean?
In Canada, the law automatically gives the author, artist or creator of original poems, books, plays, musical scores and paintings ownership rights or “copyright” in that creation. Simply put, copyright means that no one else can copy your work without your permission. This right generally lasts during your lifetime plus another 50 years after your death.
When does copyright not apply?
If you use your artistic work on a useful article, such as a decorative lamp or goblet, by employing the article as a model or pattern to make 50 or more decorative lamps or goblets, then copyright protection, with some exceptions, isn’t usually available, and you generally have to apply for registration of an industrial design instead. You also can’t claim copyright in a very short combination of words, such as the title of a book or song.
Do you have to register your copyright?
Because copyright is automatic, you don’t have to register it. But registration can help prove you own the copyright, especially if you have to sue someone for what’s called “infringement” of your copyright. When you register your copyright, you are the presumed owner of the work and the burden of proof is on the person challenging your copyright to disprove your ownership. If you don’t register your copyright, the burden of proof is on you to prove that you own the copyright.
How do you contact the Canadian Intellectual Property Office?
The address for the Patent Office, Trade-Marks Office and other offices is care of the:
Canadian Intellectual Property Office
Place du Portage Phase I
50 Victoria Street
Gatineau, Quebec K1A 0C9
CIPO’s website is www.cipo.gc.ca. For brochures, check their website or call them at 1.866.997.1936.
Summary
Patents protect new, useful and ingenious inventions. Industrial designs protect the shape or ornamental appearance of mass-produced articles. Trademarks protect words, symbols and logos used to distinguish the goods or services of one trader from those of another. And copyright protects original books and poems, artwork, movie scripts and the like.
[updated June 2008]
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