- What is a Patent?
- What Can be Patented?
- What Can’t be Patented?
- What is a Trade-Mark?
- Registered Trade-Marks vs. Unregistered
- Requirements for Registering a Trade-Mark
- What is a Copyright?
- What are Industrial Designs?
- What Industrial Designs are Registrable?
- What Industrial Designs are Not Registrable?
- What Are the Time Limits for Registering an Industrial Design?
Patents protect inventions. Patents are issued by the government of each country and grant to the owner the right to prevent anyone else from making, using or selling the invention covered by the patent in that country.
An invention is any new and useful machine, device, apparatus, system, method, process or composition of matter. Because of the requirement that the invention be “new”, it is important that inventor not tell people about the invention prior to filing for patent protection so as to not render the invention no longer “new” and therefore unpatentable.
In order to be eligible for patent protection, you must show that your development fits within a recognized category of patentable subject matter. In Canada, your development must either be an art, process, machine, manufacture or composition of matter.
Arts and processes are steps or methods which act on objects to achieve a result. Machines are a grouping of components which act together. A manufacture is something made by man or a machine and a compositions of matter includes chemical compositions.
To be patentable, and after first fitting within one of the fields of patentable subject matter, a development must be new, non-obvious and useful.
To be considered new, the subject matter must not have been sold, published, or otherwise available to the public before that application is filed. This includes where the inventor discloses the invention to the public as well when someone else discloses the invention. A single prior publication can also render a patent not “new” if it discloses every essential element of claimed invention.
This is one of the reasons why it is imperative that a patent application is filed before the invention is disclosed to the public. Although the inventor may be able to file an application up to one year after the inventor disclosed the invention, this ability is limited to select countries, such as Canada and the US. In most other countries, no patent protection is available after the invention has been disclosed. This one year “grace period” is also limited only to disclosures by the inventor.
The development must also be not obvious to a person of ordinary skill of the art. This is sometimes referred to as requiring an inventive step. The person of ordinary skill in the art is expected to have normal skill and knowledge in the field of the invention.
The prior art that is considered available is all patents, patent applications and publications available at the claim date of the invention in question. Essentially, if the invention in question would have been suggested to this person based on their knowledge and the available prior art to arrive at this invention, it is considered obvious and therefore unpatentable.
The determination of obviousness is a difficult legal test to apply in addition to being slightly different in most countries. If you have any doubt about whether your development is obvious, please contact us.
Utility requires the development to actually work. This is typically the easiest requirement to satisfy. This requirement is usually met where it can be shown that the device will perform the function it is intended to do.
In Canadian law, scientific principles or abstract theorems are explicitly excluded from patentability. This would include mathematical formulae or laws of nature. Similarly, Canadian courts and the Canadian Patent Office have indicated that they also consider other types of subject matter to be unpatentable. Significant examples include higher life forms, a series of mental steps, schemes or plans of doing business, methods of medical treatment and methods relying on professional skill.
Trade-marks protect the name or logo of a company. Trade-marks grant their owner the right to prevent any other party from applying the same or a confusingly similar mark to similar products and services or to closely related products and services in some cases.
A trade-mark may be a word, design, logo, sound or color. Trade-marks is used to distinguish the wares and services of the owner from their competitors. A trade-mark may also be a combination of more than one of these elements.
Trade-marks may be registered, however, the mere adoption and use of a mark may provide some protection to the owner as an unregistered mark. An advantage of registration of a trade-mark include preventing infringement or passing off across Canada as opposed to only locally in the case of unregistered marks. Additional advantages include the right to file corresponding trade-mark applications in other countries and preventing others from filing applications for similar marks.
Unlike patents, there is no need for secrecy before filing a trade-mark application. The requirements for registering a trade-mark in Canada are that the mark must not be:
- · The name of a person;
- · Descriptive of the products or services it is used with;
- · Confusingly similar to a previously used or registered mark; or
- · Prohibited in as an “official mark” in Canada, such as the flag crest or arms of a government body.
Copyright protects original literary, dramatic, musical, artistic and other similar works. Copyright protection may also extend to software. Copyright arises automatically and is held by the original author of the work in question. The copyright owner has the exclusive right to produce, reproduce, perform or publish the copyrighted work.
Industrial designs (called “Design Patents” in the United States) protect the shape, pattern or ornamental features of a manufactured article. Industrial designs are protected by obtaining an industrial design registration (design patent) in that country and have a term of 10 years (14 years for US design patents).
An industrial design is limited to the aesthetic features of the article that appeal to and are judged solely by the eye. The registration may also prevent the use by others from selling articles having designs which substantially similar to the registered industrial design (or design patent).
An industrial design is not permitted to cover aspects of the article which are dictated by the way the article functions. Similarly methods or processes of constructing that article are also not registerable. Either of these aspects are more properly protected by a patent.
In Canada and the United States, similar to patents (often called “utility patents” in the United States), an industrial design application must be filed within one year of the first publication of the design or sale of the article having the design applied to it. In many other countries, a design is not registerable if it has been disclosed to the public (for example by describing, selling, publicly displaying or distributing it) before a design application is filed. Therefore, in practice, a design application should be filed before the design is published or any articles having the design applied thereto are sold.