Your intellectual property (IP) can be a very valuable asset. But what is it?
The IP Cheat Sheet
- Copyright: Protects the expression of ideas in the form of original literary, dramatic, musical and artistic “works” and related subject matter.
- Can include written materials (manuals, guides, blog posts, articles), drawings, photographs, logos, videos, software, websites
- Gives the holder the exclusive right to reproduce, perform, publish, etc. a work or a substantial part of the work
- Arises automatically upon creation of the work (registration not required)
- Generally lasts the life of the author of the work plus 50 years
- Trademark: A logo or word(s) that you use to identify to consumers that you are the source of the goods and services.
- Attach to specific goods and services so it is possible for identical trademarks to co-exist if they are used in association with different goods and services
- Purpose of trademark law is to protect consumers from confusion as to the source of the goods and services they are buying
- Registered trademark – gives owner exclusive right to use the trademark in association with goods or services throughout all of Canada and provides more options for enforcement against third parties. You can use the “®” symbol if your mark is registered
- Common Law (Unregistered) trademark – rights are limited to jurisdiction of use and reputation of your mark. You can use the “™” symbol
- Patent: Protects inventions, including products, machines, processes, compositions of matter, or improvements to one of these things.
- Invention must be (i) new, (ii) useful, and (iii) non-obvious
- Patent holder has exclusive right to make, use and sell an invention in exchange for complete disclosure of invention
- Registration is required
- Protection generally lasts for 20 years from date of filing application
- Industrial Design: Protects the visual features of shape, configuration, pattern, ornament of a product, or a combination of these.
- Registration is required and protection lasts for 10 years from the registration date
- Trade Secrets: Business information that is valuable because it has been kept a secret.
- No legislative protection and, if disclosed, there may be limited options for recourse
Tips (and Traps)!
Keep these things in mind to help protect your IP and avoid common pitfalls:
- Plan Ahead
- Consider a trademark clearance search
- Don’t disclose your invention too early (it may prevent you from obtaining a patent later)
- IP rights vary by jurisdiction so consider your national and international IP strategy
- Make Sure You OWN Your Intellectual Property
- Employers generally own the copyright in works made by employees in the course of employment under a contract for service, but not the copyright in works made by independent contractors
- Generally, the inventor of an invention will be the first owner, unless the inventor was “hired to invent”
- Get it in writing either way!
- Put the Appropriate Agreements in Place
- Consider Employment Agreements, IP Assignment Agreements, Waiver of Moral Rights, Licensing Agreements, Non-disclosure Agreements, etc.
- Look for any provisions in other agreements (such as Investor Agreements) that affect your IP rights
- Use Your Trademarks
- Use it or lose it!
- For goods, display your trademark on the package, label, or directly on the goods
- For services, display your trademark in advertising of the services or during the performance of the services
- Use your trademark as registered (don’t substantially change the mark)
- Police your marks and make sure third parties are not using confusingly similar marks
- Don’t Use the IP of Others without Authorization
- Don’t assume that because something is online it is not protected by copyright (even if there is no “©”)
- Don’t use a trademark that is confusing with a third party’s trademark
- Don’t use pictures, names, likeness of others without permission
- Train your employees
Patience Omokhodion | Partner, Cassels Brock & Blackwell LLP