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What You Need to Know About Owning Your Intellectual Property

Lisa Abe-Oldenburg

Catherine Dennis Brooks

Dr. Karen Durell

March 26, 2015

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What You Need to Know About Owning Your Intellectual Property

1. Introduction

2. Copyrights

3. Trade-marks

4. Patents

5. Q&A

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INTRODUCTION

• “Intellectual Property” or “IP” is a term used to describe the many types of intangible rights, which can co-exist in same thing or process

• Statutory rights differ in each country– In Canada, we have a Copyright Act, Trade-marks Act and a

Patent Act

– Other statutory IP, e.g. Industrial Designs, Integrated Circuit Topographies, Plant Breeders’ Rights

• Common law rights, e.g. Trade Secrets (created through duties of confidence or contract)

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Introduction

• Each type of IP comes with its own bundle of rights

• Anyone who creates, hires someone to create, buys, sells, distributes, licenses or uses/exercises the IP must understand who owns it, what specific rights they have and what they don’t

• Buyer/user risk of infringement claims and serious damages or increased license fees/royalties if you don’t have the rights you need up front

• Seller/licensor risk of giving away too much and leaving money on the table if you don’t clarify the IP rights

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COMMON COPYRIGHT PROBLEMS

• Scenario 1 – Software license giving “right to use” software – what does

that mean???

• Copyright protects every original literary (includes computer programs and databases), dramatic, musical and artistic work

• The “right to use” is not a right under the Copyright Act

• Owner’s exclusive statutory rights include:– Produce– Reproduce/copy– Perform– Publish– Translate– Communicate by telecommunication– Also for computer programs, to rent

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Common Copyright Problems

• Statutory rights can be further dissected by scope, e.g. territory, line of business, product, machine/equipment, online/Internet/electronic vs. hardcopy, number/volume, term/duration, etc.

• Is it worldwide? Unlimited? Perpetual?

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Common Copyright Problems

• Scenario 2 – You hired a developer

• Just because you paid for it, doesn’t mean you own it

• No “work for hire” rule in Canada

• Copyrights exist automatically under Copyright Act - works are first owned by the author/creator (or their employer if created in the course of employment)

• Subcontractors and freelancers own the work they create unless they sign a written assignment

• What rights are being assigned/transferred?

• Otherwise might be just an implied license – what is its scope???

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Common Copyright Problems

• Scenario 3 – Your company is selling or buying IP licenses to/from

a third party and the license agreements don’t prohibit

assignment/transferability

• Is the IP transferable or sublicensable?

• Similarly, what happens if you need to give/receive the IP to/from a customer, outsourcer or service provider?

• Copyright license grants are personal to the licensee – need express permission from the licensor to transfer/assign or sublicense. Silence is not acceptable.

• Can you give proper reps and warranties as to ownership and/or licensability?

• Have you checked the confidentiality restrictions in the licenses?

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Common Copyright Problems

• Scenario 4 – You try to change the original work which you do rightfully own

and still get sued by the author

• Violation of author’s “moral rights” – what are those???

• You cannot modify a copyright work unless you have a written waiver of moral rights from all authors

• Waiver not the same as an assignment

• One waiver may not cover all future owners/assignees and licensees

• Moral rights include:– Right to integrity of the work (can’t modify it)– Right to remain anonymous – Right to be associated with the work by name or under a pseudonym

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Common Copyright Problems

• Scenario 5 – Your company receives/gives a non-exclusive sole

license to exercise the right to….

• What does that mean???

• Know the difference between exclusive vs. non-exclusive vs. sole license rights– “Exclusive” means to the exclusion of all others including the licensor

themselves (creates a monopoly) – licensor can no longer exercise those rights or license those rights to others

– “Non-exclusive” means the licensor can continue to exercise those rights and can further sublicense others the same rights (creates competition)

– “Sole” means the licensor can continue to exercise those rights (some competition) but cannot further sublicense others the same rights

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What is a Trade-mark?

• Words MILLER THOMSON

• Slogan ADDED EXPERIENCE. ADDED CLARITY.

ADDED VALUE.

• Word & Design

• Design

A trademark distinguishes your goods and services from those of others.

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Common Trade-mark Problems

Scenario 1 - TESLA trade-mark protected by Tesla Motors, Inc. in Canada and the United States, but registered in China by an entrepreneur. $4 million infringement action started by the entrepreneur when TESLA cars sold in China.

• Trade-mark rights are generally national in scope

• Protection through registration should be obtained in all jurisdictions in which business is carried on in association with the trade-mark

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Common Trade-mark Problems

Scenario 2 - Yukon Territory television ad campaign to promote tourism launched with use of the slogan 'We'll leave a light on for you'. Motel 6 owns registrations for 'We'll leave the light on for you'.

• Searches are recommended prior to filing a trade-mark application to ensure it is available for use and registration in Canada

• Various types of searches:• Identical hit search• Full availability search

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Trade-marks

• Identical hit searches have limitations – reveal only identical / near identical marks

• Full availability searches obtained from an external provider (Thomson CompuMarK) – comprehensive information including confusingly similar marks, business name registrations, domain names, internet search results

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Common Trade-mark Problems

Scenario 3 - Your company has used a trade-mark for many years. Is it necessary to register it?

• Benefits of Trademark Registration• Trade-mark rights exist without registration and are protected through the

tort of passing off

• Registration gives the owner of the exclusive right to use the mark throughout Canada

• Statutory causes of action available to registrant

• Public notice of rights may deter infringers

• Practical advantage in litigation

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Trademarks

Prosecution of Trade-mark Application

• A trade-mark is registrable if it is not:• A word that is primarily the name or surname of an individual

who is living or has died within the preceding 30 years

• Clearly descriptive of deceptively misdescriptive of the character of quality of the wares or services in association with which it is used or proposed to be used

• Confusingly similar to a registered or applied for trade-mark

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Trade-marks

Prosecution of a Trade-mark Application

• Filing

• Examination

• Approval or Examiner’s Report

• Advertisement in Trade-marks Journal

• Allowance

• Registration

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Trade-marks

Prosecution of a Trade-mark Application

• One or two years from filing to registration

• $1500 to $2000 if no complicated Examiner’s reports and no opposition proceedings

• Registration is valid for 15 years and can be renewed upon payment of renewal fee

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Common Trade-mark Problems

Scenario 4 - Your company stops using a trade-mark it registered and starts using a different mark. Can its rights in the registered mark be lost?

• Section 45 Proceedings• Can be initiated 3 years after registration

• Must show use of the mark as registered within the three years prior to the date of the section 45 notice

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Trade-marks

Trade-mark Use, Marking and Notices

™ Trade-mark of Miller Thomson LLP, used under license.

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PatentsFirst Owner: Inventor

Right: exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used

National Filing Required

20 years from filing date

Criteria: Protection for an invention that is novel, non-obvious, has utility and is patentable subject matter

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Common Patent Problems

• Scenario 1: I went to a conference / trade show and presented my invention.

– Public Disclosure• Rules can Differ by Country

– Absolute Novelty

– 12 month Disclosure Grace Period

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Common Patent Problems

• Scenario 2: A required due date for my patent was missed.– Examples of Required Due Dates:

• Maintenance Fee

• Request for Examination

• Response to Office Action

– Deemed Abandoned• 12 months

• Reinstatement

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Common Patent Problems• Scenario 3: A competitor is racing to the

marketplace and may have filed a patent application.– First-to-file System

– 18 month Application Secrecy• Plant Derived Vaccine Applications

– Rugers (N. Tumer, etc., Mar. 5, 2012)– H. Daniell (Sept. 11, 2012)– U of Central Florida (H. Daniell, Dec. 17, 2012)

– Sound Prediction

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Common Patent Problems• Scenario 4: The patents were filed in the name

of the inventors, but they should be owned by the company.

– First Owner = Inventor(s) • Chain of Title

– Contracts/IP Policies» Employees?» Students?

– Beneficiary or Estate of inventor?

– Assign Patents• File Assignments with the Patent Office

– Witness / Proof of Execution by Assignor

e.g., Vaccine Applications:

App #1. Owner: H. Daniell

App #2. Owner: U of Central Florida & Inventor: H. Daniell

www.millerthomson.com

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This presentation is provided as an information service and is a summary of current legal issues. This information is not meant as legal opinion and viewers are cautioned not to act on information provided in this publication without seeking specific legal advice with respect to their unique circumstances.