Whether you are an inventor, creator, author, or business owner, Intellectual Property impacts your industry and work, and an IP lawyer is a vital member of your team to facilitate the protection of your IP. 

 

Intellectual Property (IP) is a category of property composed of creations of the mind which is protected by Intellectual Property Rights. 

 

Intellectual Property Rights, whether registered or unregistered, are rights in and to a piece of Intellectual Property. These rights extend to among other things, rights in copyright, trademark, patent, trade secrets, designs, and moral rights. 

 

Copyright: The exclusive right to produce, reproduce, publish or sell a work or a substantial part of a work in any form. 

• Governed by the Canadian Copyright Act. This Act provides copyright protection for authors of works. 

• The Act protects the language and words used to express ideas, concepts and themes, but it does not protect ideas, concepts or themes. 

• Historically the duration of copyright in Canada was the life of the author and 50 years after the author's death, excluding exceptions set out in the Act. Due to Canada’s treaty obligations under the Canada-United States-Mexico Agreement and Canada’s statutory requirement to review the Copyright Act every 5 years, Bill C-19 and Bill C-24 were introduced to amend the Act. Bill C-19 received royal assent and extends the duration of copyright to life of the author plus 70 years after the author’s death. These amendments will come into effect by the end of 2022.   

 

How to Register

• The Act sets out that a certificate of registration of copyright is evidence that copyright exists and that the individual registered is the owner of the copyright. 

• To register, submit an application with the Canadian Intellectual Property Office (CIPO) and pay the required fees. 

• The application can be submitted online, by mail or facsimile to the CIPO; there is a discounted rate for applying online. 

 

Trademark: One or more combination of words, sounds, tastes, colours, textures, scents, moving images, three dimensional shapes, modes of packaging or holograms, used to distinguish the goods or services of an individual or organization. 

• Governed by the Canadian Trademarks Act. 

• A Trade Name is the name of the business. A trade name can only be registered under the Trademarks Act if it is also used as a trademark - i.e., used to identify the goods or services. 

• Once a trademark is registered, an individual or organization receives sole right to use the mark across Canada for 10 years. 

  • A trademark can be renewed every 10 years for a fee. 

• Common law rights can be acquired in an unregistered trademark if it is used for a certain amount of time and gains sufficient goodwill and reputation. 

  • There can be a great deal of effort, time and cost associated with enforcing these rights. 

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How to Register 

• A separate application must be filed for each trademark. 

• A complete application includes: 

  • Name and mailing address of applicant; 

  • Representation, description or both, of the trademark; 

  • Statement in specific and ordinary commercial terms of the goods/services associated with the trademark;

  • Statement of goods/services grouped according to Nice Classification;

  • Application fee; and,  

  • Any other requirements specific to the type of trademark being registered. 

• Registering provides additional rights including:

  • Presumption of ownership throughout Canada;

  • Exclusive rights throughout Canada without need to prove reputation; and, 

  • Entitlement to prevent against third party use of an identical or confusingly similar mark anywhere in Canada (including geographical areas where the owner has not used the mark to develop reputation). 

 

Patent: An exclusive right granted for an invention (a product or process that generally provides a new way of doing something or offers a new technical solution to a problem). 

• Through a patent, the Canadian government provides the inventor with the right to stop others from making, using or selling the invention from the day the patent is granted to a maximum of 20 years after the day that the patent application was filed. 

• In Canada, the first applicant to file a patent application for an invention is entitled to the patent. 

• The rights provided by a Canadian patent extend throughout Canada; to acquire patent rights in other countries they must be applied for separately. 

 

How to Apply 

• An invention is eligible for patent protection if it is: 

  • new;

  • useful; and,

  • inventive. 

• An application must include: 

  • petition;

  • statement of entitlement; 

  • inventor information; 

  • abstract; 

  • claims; 

  • description; 

  • drawings; and,

  • sequence list (if applicable). 

• An application may include; 

  • small entity declaration (if applicable);

  • common representative appointment document (if applicable);

  • agent appointment document (if applicable); or, 

  • claim priority. 

• There are fees associated with filing the application as well as final fees, if the patent application is allowed. 

 

An Intellectual Property Strategy is a plan for how a business will develop, grow, leverage and monetize its portfolio of IP assets. The goals of this strategy includes creating competitive advantage in the marketplace, driving revenue and profitability, leveraging IP assets to meet business objectives, and propelling sustainable growth. 

 

At a high-level, an IP strategy can be broken down into the following 4 stages: 

1. Understanding your business, brand and IP. 

2. Developing your IP operations.

3. Execution. 

4. Iteration. 

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[CIPO (2022) IP Strategy process steps. Available at: https://www.ic.gc.ca/eic/siTe/cipointernet-internetopic.nsf/eng/wr04563.html.] 

 

CIPO suggests a 6-step approach to follow when building an IP Strategy:

1. Identify the internal IP.

2. Learn about the external IP.

3. Identify IP gaps.

4. Create a plan for how to use IP. 

5. Implement - put the IP into action! 

6. Monitor the IP - reassess and realign. 

 

Before implementing an approach to building an IP Strategy, consider the following questions: 

• Is your business model clearly defined?

• Does your business have existing IP assets? 

• Is your business considering acquiring new IP assets?

• Has the business taken any steps to protect its IP assets? 

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To speak with an IP lawyer contact us via email at erikamisasi@misasilegal.ca, Instagram at @misaslegal, phone at 647-297-5007, or visit our website at www.misasilegal.ca for more information.  

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See Also: 

• Whose Intellectual Property is it Anyway?

 

Additional Links 

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For more information on planning your IP Strategy: https://www.ic.gc.ca/eic/siTe/cipointernet-internetopic.nsf/eng/wr04563.html. 

 

For more information on building your IP Strategy: https://www.ic.gc.ca/eic/siTe/cipointernet-internetopic.nsf/eng/h_wr04985.html.