Canadian Intellectual Property - Exam Prep Study Guide

[English]

Canadian Intellectual Property Office (CIPO)

• The Canadian Intellectual Property Office (CIPO) is a Special Operating Agency (SOA) of Industry Canada. CIPO administers the intellectual property (IP) system in Canada and disseminates IP information.

Patents

What is a patent?

• Through a patent, the government gives you, the inventor, the right to exclude others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application. You can use your patent to make a profit by selling it, licensing it or using it as an asset to negotiate funding.

• In exchange, you are expected to provide a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge. The Patent Office will lay open your application 18 months from the earlier of, your filing date in Canada, or your filing date abroad under an international treaty; this date is known as the "convention priority date."

• People may then read about, though not make, use or sell, your invention without your permission. Only after your patent has expired, or lapsed for non-payment of maintenance fee, may anyone freely make, use or sell your invention. The idea is to promote the sharing of technological information while giving you a monopoly on your creation.

• The rights conferred by a Canadian patent extend throughout Canada, but not to foreign countries. You must apply for patent rights in other countries separately. Conversely, foreign patents do not protect an invention in Canada.

What can you patent?

• Suppose you are the proud inventor of an electric door lock. How do you know if you can obtain a patent for it? There are 3 basic criteria for patentability.

• First, the invention must be new (first in the world). Second, it must be useful (functional and operative). Finally, it must show inventive ingenuity and not be obvious to someone skilled in that area.

• The invention can be a product (a door lock), a composition (a chemical composition used in lubricants for door locks), an apparatus (a machine for making door locks) or a process (a method for making door locks), or an improvement on any of these. 90 percent of patents are, in fact, for improvements to existing patented inventions.

• A patent is granted only for the physical embodiment of an idea - e.g., the description of a plausible door lock - or for a process that produces something saleable or tangible. You cannot patent a scientific principle, an abstract theorem, an idea, a method of doing business, a computer program, or a medical treatment.

• You may obtain a patent for an improvement to an existing patented invention, but keep in mind that the original patent may still be in force. Hence, manufacturing or marketing the product with your improvement would probably be an infringement. This situation is often resolved by agreement between the patentees to grant licences to each other.

When to apply for a patent

• In Canada, patents are given to the first inventor to file an application. Therefore, it's wise to file as soon as possible after completing your invention, in case someone else is on a similar track. Even if you can prove that you were the first to conceive of the invention, you lose the race if a competing inventor files before you do.

• On the other hand, filing too soon, while you're still developing your invention, may mean omitting essential features from the application. You may then have to reapply, adding to your expenses and risking possible patent disputes.

• It's imperative, also, not to advertise, display or publish information on your invention too soon. Public disclosure of your invention before filing will make it impossible to obtain a valid patent. There is an exception in Canada if the disclosure was made by the inventor, or someone who learned of the invention from the inventor, less than one year before filing. Most other countries require filing before use or written disclosure anywhere.

Preparing a patent application

• A patent application consists of an abstract, a specification and often drawings.

• The abstract is a brief summary of the contents of the specification (150 words or less).

• The specification comprises:
  1. a clear and complete description of the invention and its usefulness;

  2. claims which define the boundaries of patent protection.

• Your specification must be so clear and complete that it will enable anyone with average skill in the technology to make or use the invention.

• Information you specify as protected by your claims cannot be used freely (copied, manufactured or sold) by others until the patent expires. Information not protected by your claims can be used immediately by anyone.

• The challenge is to draft the claims so that your invention is defined broadly enough to provide maximum protection against potential infringers, while at the same time being sufficiently specific to identify your invention and distinguish it from all prior inventions.

Filing your application

• Filing a patent application means preparing a formal application and asking the Commissioner of Patents to grant you a patent.

• To receive an official filing date in Canada, you must submit no less than the following:
  1. statement that a patent is sought;

  2. document describing an invention;

  3. name of the applicant;

  4. address of the applicant or the applicant's patent agent;

  5. prescribed filing fee.

• If you do not supply a proper description of the invention, the Patent Office will not give you a filing date and will return the papers you have submitted and refund the filing fee.

• Bear in mind that a complete patent application further includes the following:
  1. formal petition;

  2. abstract of the invention;

  3. claim or claims to the invention;

  4. any drawings mentioned in the description;

  5. paper and computer-readable copies of nucleotide sequence listings, if applicable;

  6. appointment of a patent agent or representative when required.

• It is in your best interest to file as full a description of your invention and as complete an application as possible right at the outset. Any of items 1 to 6 not supplied at the time of filing may be submitted, without charge, within 15 months after the priority date, or the filing date if there is no priority date. However, if your application is still incomplete after 15 months, you will be notified by the Office, and you will then have to pay a completion fee and complete the application within a prescribed time which will be indicated in the notice.

• Don't submit models or specimens of the invention unless the Commissioner requests them.

• Once accepted for filing, your application is assigned a number and filing date, and you will be informed of these. This is no guarantee of a patent. It simply means your application is pending. The application will be laid open to public inspection 18 months after the filing date or priority date.

• You may request to have your application laid open earlier, if you wish.

Requesting examination

• Your application will not automatically be examined simply because you've filed it. You must formally request examination and attach the examination request fee. This request must be made within 5 years of the Canadian filing date, otherwise your application will be considered as abandoned. If this happens, you may request reinstatement through a letter to the Commissioner of Patents and the payment of the prescribed fee.

• Why would you file an application and not automatically request examination? Perhaps you need time to assess the feasibility or marketability of your invention. Filing gives you some protection for your invention without having to fully commit yourself to the patent procedures. Your competitors will likely be wary of infringing on your invention after your application is published because you could seek retroactive compensation in the event that you are granted a patent.

• However, if you do not request examination within the 5-year period, anyone will be able to freely make, use or sell the products or processes described in your application.

• Once you've requested examination, you'll probably be eager to see results quickly. Remember that the Patent Office receives some 30 000 requests for examination a year, and that patent examiners consider cases in the order in which they are received. The examination process may take 2 to 3 years.

Filing prior art and protests

• Patent applications are made public 18 months after their Canadian filing date, or an earlier foreign filing date, if applicable. Anyone else may raise questions about the patentability of your invention or one of its claims by filing what is known as "prior art"-information that might cause the patent examiner to object to one or more of your claims. The prior art can be patents, patent applications which have been open to public inspection, and published material that has a bearing on the case. An explanation of how the information is pertinent is also required.

• Anyone may also file a protest against the granting of a patent. Such protests will be made public.

Special order examination

• Perhaps you have special reasons for wanting an early examination of your application. You expect imminent competition or you hope to establish a business once you've received protection for the invention. If your case is exceptional in this way, you may ask for advanced examination by means of a "Special Order" request. A "Special Order" request no longer requires an affidavit. Anyone may ask for advanced examination by means of a "Special Order" request accompanied by a fee and an indication of the reasons for the request.

• Note, however, that a "Special Order" request will not be considered unless the application has been laid open to public inspection and a request for examination has been made.

The examiner's task

• The patent examiner will assess your application to determine whether it's in the proper format. The next step is a study of the claims and a search among prior patents and other technical literature to find what is most closely related to the features covered in your claims. The examiner will object to what is old, obvious or improper in your claims through a report to you or your agent.

Patent Office letter of objection

• The examiner's search often results in the objection to some claims. This is the result of patent agents drafting broad claims in an attempt to obtain the fullest possible protection. The examiner may discover previous patents or publications which show every feature of one or more claims in your application. Or the examiner may judge some claims to be obvious to a person having ordinary skill in the field. The examiner's objection will be in a report or letter called a "Patent Office Action." The Action may object to your whole application or only some claims, or it may request other changes in your application.

Responding to examiner's objections

• If the examiner objects to some of your claims, don't despair. You may respond to the objections as long as you do so within the period specified in the Patent Office Action. Your patent agent must send the response, called the "amendment letter," to the Commissioner of Patents.

• The response may ask the Commissioner to amend your application by changing or cancelling some claims, or adding new claims. You must meet or overcome each objection raised by the examiner.

Reconsideration by the examiner

• On receiving your response, the examiner will study it and prepare a second Office Action. This may be a "notice of allowance" telling you that you will be granted a patent. Or it may be a call for further amendments. This exchange of Office Actions and responses may be repeated until the examiner allows your application or states that the Action is final.

Appealing

• If the examiner makes a final objection to your application, you still have the right to appeal to the Commissioner of Patents by requesting that the Commissioner review the examiner's objection. The review is conducted by the Patent Appeal Board, a special committee of senior Patent Office officials. If you wish, you can appear before this board. If the Commissioner objects to your appeal and refuses to grant a patent, you may take your case to the Federal Court of Canada, and from there to the Supreme Court of Canada.

Re-examination of a granted patent

• Great! You've been granted a patent. But you still may have hurdles to overcome. After issue, the Commissioner of Patents or a third party may ask that one or more claims of your patent be re-examined. This can happen at any time during the term of your patent. The request must be based on "prior art" documents, i.e., written descriptions of the invention that are available to the public. The Commissioner of Patents may appoint a re-examination board which will issue a certificate cancelling, confirming or amending your patent claims as appropriate. You may appeal decisions that cancel or amend claims to the Federal Court of Canada. You cannot, however, appeal the Commissioner's refusal to set up a re-examination board.

Reissue and disclaimer

• If you own a patent that inadvertently contains omissions or mistakes, you may apply to have it reissued within 4 years of its issue to broaden or amend its claims, or you may apply for a disclaimer any time after issue to narrow the scope of some or all of the claims of your patent.

Fees

• There are 3 kinds of fees you must pay to obtain a patent: filing fees, examination fees and grant of patent fees. Yearly maintenance fees are required to maintain an application or a patent in force.

• Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis. Owners of valuable patents who are benefitting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, thus letting the patents lapse and enabling others to use freely, at an earlier date, the technology described in those patents.

Trade-marks

What is a trade-mark?

• A trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organisation from those of others in the marketplace. Trade-marks come to represent not only actual wares and services, but the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.

• There are 3 basic categories of trade-marks:
  1. Ordinary marks are words or symbols (or a combination of these features), that distinguish the wares or services of a specific firm or individual. Suppose you opened a courier business which you called "Giddy-up." You could register the words as a trade-mark (assuming all legal requirements were met) for the service you offer.

  2. Certification marks identify wares or services which meet a defined standard. They are owned by one person but licensed to others to identify wares or services which meet a defined standard. Examples are: the Woolmark design owned by Woolmark Americas, Ltd., for use on clothing and other wares and the logo of the Association of Professional Engineers.

  3. Distinguishing guise identifies the shaping of wares or their containers, or is a mode of wrapping or packaging wares. If you manufactured candy moulded to look like butterflies, you might want to register the butterfly shape as a trade-mark under "distinguishing guise."

Trade name vs. trade-mark

• A trade name is the name under which you conduct your business, whether it be your own name, or the name of a corporation or a partnership or a name adopted for a segment of that business, i.e., a division of a company. The trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, used to identify wares or services.

• For instance, let's say you own an ice cream business and your company is called A.B.C. Ltd.:
  • Example 1: People know your ice cream under the name A.B.C., because you use it as a trade-mark on or in association with your ice cream. You can, therefore, register A.B.C. as a trade-mark.

  • Example 2: People know your ice cream under the word you have promoted - for example, "Northpole." Even though the official name of your company is A.B.C. Ltd., no one associates it with your wares. Therefore, A.B.C. cannot be considered a trade-mark unless you begin to use it as one.

• In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name which is similar to the registered mark. Ideally, you should conduct a search of existing trade names before filing a trade-mark application. To do this, you can consult a variety of sources, including the NUANS (Newly Updated Automatic Name Search) database. A search of trade names or company names appearing in telephone directories from cities across Canada is also appropriate.

Registered trade-mark vs. unregistered trade-mark

• A registered trade-mark is one that is entered on the Trade-marks Register. You are not required to register your trade-mark - using a mark for a certain length of time can establish your ownership through Common Law - but it is highly recommended.

• You must, however, apply for registration of a mark for precious metals. Your filing receipt is necessary if your goods must pass through customs.

• Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration.

• Registration is prima facie evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.

• Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.

• Consider this scenario: For the past 5 years you've been operating a highly successful ice cream emporium under the word "Northpole" in your home town in Nova Scotia. You've never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark "Northpole" to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word "Northpole." This development couldn't come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.

Who can register a trade-mark?

• Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.

How do I register my trade-mark?

• You can register a trade-mark electronically by filing an application for registration on-line with the Trade-marks Office in Gatineau (Quebec). Your application then goes through a stringent examination process to make sure that it meets all requirements of the Trade-marks Act. Keep in mind that in most instances your trade-mark must be used in Canada before it can be registered. While your application may be based on "proposed use," you must put your trade-mark into use before registration can occur.

How much does it cost?

• The basic federal government costs are:
  • $150 CAD (non-refundable) for each trade-mark applied for;

  • $200 CAD for a certificate of registration, if your application is successful.

5-step examination process

• When the Trade-marks Office receives your application, it does the following:
  1. Searches the trade-marks records to find any other trade-mark that may come into conflict with the one you've submitted and, if one is found, informs you of it.

  2. Examines the application for compliance with the requirements of the Trade-marks Act and Regulations and informs you of requirements which are not met by the application.

  3. Publishes the application in the Trade-marks Journal, which is issued every Wednesday.

  4. Allows time for opposition (challenges) to the application. Anyone may, upon payment of $250 CAD, file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse your application or reject the opposition. The parties are notified of the decision and reasons why.

  5. If no one files an opposition to your application, the mark is allowed. Upon payment of the $200 CAD registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, your mark is registered.

How long does registration last?

• Your registration is valid for 15 years, and you can renew the registration every 15 years thereafter upon payment of the $300 CAD renewal fee.

• Note, however, that your registration may be the subject of a section 45 proceeding before the Trade-marks Office or an expungement proceeding before the Federal Court of Canada.

Copyrights

What is a copyright?

• In the simplest terms, copyright means the right to copy. Only the owner of copyright, very often the creator of the work, is allowed to produce or reproduce the work in question or to permit anyone else to do so. Suppose, for example, that you have written a novel. Copyright law rewards and protects your creative endeavour by giving you the sole right to publish or use your work in any number of ways. You may also choose not to publish your work and to prevent anyone else from doing so.

What is covered by copyright?

• Copyright applies to all original literary, dramatic, musical and artistic works. Each of these general categories covers a wide range of creations. Here are just a few examples:
  • literary works: books, pamphlets, poems and other works consisting of text and computer programs;

  • dramatic works: films, videos, plays, screenplays and scripts;

  • musical works: compositions that consist of both words and music or music only (note that lyrics without music fall into the literary works category);

  • artistic works: paintings, drawings, maps, photographs, sculptures and architectural works.

• The word "original" is key in defining a work that qualifies for copyright protection. Naturally, you cannot obtain a copyright for someone else's creation. Originality can be tricky to determine, however, and many court cases revolve around the question of whether a work has been copied, even in part, from somebody else's work.

• Copyright also applies to 3 other kinds of subject-matter in addition to the works listed above:
  • performer's performances: performers such as actors, musicians, dancers and singers have copyrights in their performances;

  • communication signals: broadcasters have copyrights in the communications' signals that are broadcast;

  • sound recordings: makers of recordings, such as records, cassettes, and compact discs, which are called "sound recordings" in the Copyright Act, are also protected by copyright.

• Keep in mind that there is a separate copyright for musical work, for example, a song, and for the device, such as a cassette, that contains the song. Separate protection exists because the song and the sound recording are considered 2 different works.

• Copyright consists of legal rights attached to works and other subject-matter. Which legal rights apply to which works or subject-matter varies. In general, copyright means the sole right to produce or reproduce a work or a substantial part of it in any form. It includes the right to perform the work or any substantial part of it, or in the case of a lecture, to deliver it, and if the work is unpublished, it includes the right to publish it or any substantial part of it.

• Copyright in an original work also includes the sole right to:
  • produce, reproduce, perform or publish any translation of the work;

  • convert a dramatic work into a novel or other non-dramatic work;

  • convert a novel, a non-dramatic work or an artistic work into a dramatic work by way of performance in public or otherwise;

  • make a sound recording of a literary, dramatic or musical work;

  • reproduce, adapt and publicly present a work by cinematograph;

  • communicate the work by telecommunication;

  • present an artistic work created after 1988-06-07, at a public exhibition;

  • in the case of a computer program that can be reproduced in the ordinary course of its use to rent it out; and

  • to authorise any such acts.

• Copyright in other subject-matter includes the following rights:
  • in the case of a performer's performance which is not fixed to communicate it by telecommunication and to make a fixation of the performance;

  • in the case of a performer's performance which is fixed with the performer's authorisation, to make a reproduction of that fixation, or to reproduce a fixation that was not authorised by the performer, and to rent out a sound recording of the performance;

  • in the case of a sound recording to publish, to reproduce and to rent out the sound recording;

  • in the case of a published sound recording the performer and the maker of the recording have a right to payment of "equitable remuneration" for its performance in public or its communication to the public by telecommunication;

  • in the case of a communication signal a broadcaster has the right to fix the signal, to reproduce any fixation of the signal that was made without the broadcaster's consent, to authorise another broadcaster to simultaneously retransmit the signal;

  • in the case of a television communication signal, to perform the signal in a place open to the public on payment of an entrance fee; and

  • to authorise any such acts.

When copyright does not apply

• Titles, names and short word combinations are usually not protected by copyright. A "work" or other "subject-matter" for copyright purposes must be something more substantial. However, if a title is original and distinctive, it is protected as part of the work it relates to.

• You may have a brilliant idea for a mystery plot but until the script is actually written, or the motion picture produced, there is no copyright protection. In the case of a game, it is not possible to protect the idea of the game, that is, the way the game is played, but the language in which the rules are written would be protected as a literary work. Copyright is restricted to the expression in a fixed manner (text, recording, drawing) of an idea; it does not extend to the idea itself.

• Other items which are not protected by copyright include:
  • names or slogans;

  • short phrases and most titles;

  • methods, such as a method of teaching or sculpting, etc.;

  • plots or characters; and

  • factual information.

• In the case of a magazine article including factual information, it is the expression of the information that is protected, and not the facts.

• Facts, ideas and news are all considered part of the public domain, that is, they are everyone's property.

• Note too, that you cannot hold a copyright for a work that is in the public domain. You can adapt or translate such a work and have a copyright for your adaptation or translation.

Infringement

• A copyright gives you the sole right to produce or reproduce your work, through publication, performances and so on, or to authorise such activities. Anyone who does such things without your permission is infringing, that is, violating, your rights. Naturally, if you publish, perform or copy anyone else's work without their permission, you are infringing their rights.

• One specific form of infringement is plagiarism. This is copying someone else's work and claiming it as your own. An obvious example would be taking a novel that someone else wrote and publishing it under your own name (or pen name). Plagiarism can also entail using a substantial part of someone else's work. An example would be copying a novel, and simply changing the title and names of the characters.

• Some activities, if done in private, are not considered infringement. For example, if you give a private performance of someone else's song, or play, in your own home, this would not be infringement. Making a copy of a musical tape for private use is not infringement because a royalty payment to the owners of the song rights has been paid when the blank audio tape was purchased. On the other hand, making a copy of a videocassette movie protected by copyright is infringement, even if you only watch it in your own home.

Fair dealing and exceptions

• People such as critics, reviewers and researchers often quote works by other authors in articles, books, and so on. Are they infringing copyright? Not necessarily. The Copyright Act provides that any "fair dealing" with a work for purposes of private study or research, or for criticism, review or news reporting is not infringement. However, in the case of criticism, review, or news reporting, the user is required to give the source and the author's, performer's, sound recording maker's or broadcaster's name, if known.

• The line between fair dealing and infringement is a thin one. There are no guidelines that define the number of words or passages that can be used without permission from the author. Only the courts can rule whether fair dealing or infringement is involved.

• In addition to fair dealing, the Copyright Act has exceptions for different categories of users. One category is non-profit educational institutions. These are permitted to make copies and perform works and other subject-matter protected by copyright, free of charge, in the classroom, subject to certain restrictions. Educational institutions are also permitted to make use of works protected by copyright if they are done on the premises of an educational institution for educational or training purposes, provided there are no suitable substitutes available in the commercial marketplace. Educational institutions may copy news and news commentary (excluding documentaries) from radio and television broadcasts and keep the copy for educational use on school premises for up to one year from the date the tape is made. All other types of radio and television broadcasts can be copied by educational institutions and kept for up to 30 days to decide whether the copy will be used for educational purposes. If the copy is used for educational purposes, a royalty set by the Copyright Board must be paid.

• Another category of user having exceptions under the Copyright Act are "non-profit libraries, archives and museums". These institutions may copy published and unpublished works protected by copyright in order to maintain and manage their collections. Examples are making a copy for insurance purposes and to preserve a rare, original work which is deteriorating.

• This can be done as long as copies are not commercially available in a medium that meets the institution's needs. Libraries, archives and museums may copy an entire article of a scholarly, scientific or technical nature provided the copy is used for private study or research purposes. Articles in a newspaper or periodical which are not scholarly, scientific or technical can also be copied if the article is at least 12 months old at the time the copy is made, and provided the copy is used for private study or research purposes.

• Another category of user to benefit from exceptions is persons with a "perceptual disability". This term refers to someone who has difficulty reading or hearing. Persons with a perceptual disability, or at the request of a person with a perceptual disability, or for a non-profit organisation acting for his or her benefit, to copy a work protected by copyright in alternate formats such as braille, talking books or sign language. The exception applies unless a work in an alternate format is already commercially available.

• For a complete list of exceptions to infringement, refer to the Copyright Act.

Automatic protection for Canadian and foreign works

• When you create a work or other subject-matter protected by copyright, you will automatically have copyright protection provided that, at the time of creation, you were:
  • a Canadian citizen or a person ordinarily resident in Canada; or

  • a citizen or subject of, or a person ordinarily resident in, a Berne Copyright Convention country, a Universal Copyright Convention (UCC) country, a Rome Convention country (for sound recordings, performer's performances and communication signals only), or a country that is a member of the World Trade Organisation (WTO) country; or

  • a citizen or subject or a person ordinarily resident in any country to which the Minister has extended protection by notice in the Canada Gazette.

• In some cases, you would also obtain automatic copyright if your work was first published in one of the countries included among those who have signed the Berne, UCC or Rome Conventions or the WTO agreement, even if you were not a citizen or subject of Canada, or of one of those countries.

• In short, virtually everyone living in Canada can enjoy the benefits of automatic copyright protection. In addition, Canadians are protected in most foreign countries since most belong to one or more of the international treaties - the Berne Copyright Convention or the Universal Copyright Convention, the Rome Convention or are members of the World Trade Organisation. Citizens of countries which are members of those conventions enjoy the benefits of Canadian copyright law in Canada. Canada also extends protection to certain non-member countries by way of notice in the Canada Gazette.

• Sound recordings themselves are protected internationally under the Rome Convention and under the copyright treaties, but there is quite a variation internationally as to the nature of the protection given to sound recordings. In Canada, sound recordings enjoy a broad range of protection under the Copyright Act.

Authorship

• The author is normally the person who creates the work.

Ownership

• Generally, if you are the creator of the work, you own the copyright. However, if you create a work in the course of employment, the copyright belongs to your employer unless there is an agreement to the contrary. Similarly, if a person commissions a photograph, portrait, engraving, or print, the person ordering the work for valuable consideration is the first owner of copyright unless there is an agreement to the contrary. The consideration must actually be paid for the copyright to belong to the person commissioning the photograph, portrait, engraving, or print. Also, you may legally transfer your rights to someone else, in which case, that person owns the copyright.

Duration

• Copyright in Canada protects "intellectual" as opposed to "physical" property. One difference between intellectual and physical property is that ownership of physical property, such as a boat or a toaster, is perpetual. One continues to own physical property until it is given away, sold, consumed or destroyed. Ownership of intellectual property, like copyright, is different. Copyright ends at a legally defined point in time. These points in time are set out in rules in the Copyright Act. There is one general rule and many special rules that apply to certain kinds of works.

• The general rule is that copyright lasts for the life of the author, the remainder of the calendar year in which the author dies, and for 50 years following the end of the calendar year. Therefore, protection will expire on December 31 of the 50th year. After that, the work becomes part of the public domain and anyone can use it. For example, Shakespeare's plays are part of the public domain; everyone has an equal right to produce or publish them. This rule applies to all categories of works except those to which special rules apply.

Moral rights

• Even if you sell your copyright to someone else, you still retain what are called "moral rights". This means that no one, including the person who owns the copyright, is allowed to distort, mutilate or otherwise modify your work in a way that is prejudicial to your honour or reputation. Your name must also be associated with the work as its author, if reasonable in the circumstances. In addition, your work may not be used in association with a product, service, cause or institution in a way that is prejudicial to your honour or reputation without your permission.

• Following are some situations which may infringe the author's moral rights.
  • Example 1: You've sold the copyright of a song to a certain publisher who converts your music into a commercial jingle without your permission.

  • Example 2: You've sold the copyright for your novel to a publisher who decides to give it a happy ending, instead of the tragedy you wrote.

• You cannot sell or transfer your moral rights to anyone else, but you can waive them when you sell or transfer your copyright or at a later date. A contract of sale or transfer may include a waiver clause. Moral rights exist for the same length of time as copyright, that is, usually for the lifetime of the author plus 50 years more, and passed to the heirs of the author, even if they do not inherit ownership of the copyright itself.

Industrial Designs

What is an industrial design?

• An industrial design is the features of shape, configuration, pattern or ornament (or any combination of these features) applied to a finished article made by hand, tool or machine. It may be, for example, the shape of a table or the shape and ornamentation of a spoon.

• The design must have features that appeal to the eye and although the Design Office will not judge the aesthetic merit of those features, the Office will assess originality.

• To be eligible for registration with the Industrial Design Office your design must be substantially original.

When to file an application

• There is no time limit for filing an application as long as the design has never been published. The term "published" in this context means that the design has been made public (even to your neighbours) or offered for commercial sale or use anywhere in the world. It is best to file as quickly as possible if publication has occurred. You must file within 12 months of publication or you will lose your exclusive rights to the design.

• In making a decision about whether your design can be registered, the Industrial Design Office may ask for further information. Such information may be needed if it appears that:
  • the design is not applied to a fully assembled finished article or set;

  • users will never see the article or design in the form disclosed by the application;

  • the design features are dictated solely by how the article is used;

  • the description portion of the application describes functional or manufacturing aspects rather than design features.

Why you should register

• The advantage of registering your industrial design is that it gives you exclusive rights to your design. Registration enables you to prevent others from making, importing for trade or business, renting or selling or offering or exposing for sale or rent any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied, for up to 10 years from the date of registration. Keep in mind that, unless you register your design, you can make no legal claim of ownership and have no legal protection from imitation. This is different from trade-mark and copyright protection, which allow you to claim ownership even without registration.

Who can apply

• Only the proprietor of a design may apply for and obtain registration for an industrial design. Usually, you are considered the proprietor if you have created the design. However, if you've been hired under contract to develop a design for someone else, then that person is the proprietor and is the only one entitled to apply for registration. If you work together with other people to create a design, you should file for registration as joint proprietors (unless you are all working under contract or commission).

• If you have acquired ownership of a design then you may apply.

• If you are an employee of a company and develop a design as part of your employment, then the employer may be the proprietor. In that case only the employer may apply.

• Industrial design registration is valid only if applied for and obtained in the name of the proprietor. You will save yourself time and expense by resolving the issue of ownership before applying for registration.

Before you file

• Prior to filing an application, you may wish to conduct a search of Office records at the CIPO Client Service Centre in Gatineau (Quebec), in order to better determine whether your design is truly new and original. Staff will explain search procedures to you but will not conduct the search for you. This will give you the opportunity to see other registered designs. You should also keep your design confidential.

What you cannot register

• You cannot register the following under the Industrial Design Act:
  • designs that are utilitarian only and which are not intended to provide visual appeal;

  • designs that have no fixed appearance (for example, holograms);

  • designs for components that are not clearly visible (for example, features that are hidden from view or features that are too small to have appeal to the eye);

  • a method of construction;

  • an idea;

  • materials used in the construction of an article;

  • the useful function of the article; or

  • colour (although one can protect a pattern that may be created by an arrangement of contrasting tones).

How long the process takes

• Pursuant to a provision of the Paris Convention, an international treaty signed by Canada, the Office does not register any design until 6 months after the date of filing. Normally, it takes between 8 and 12 months to have your application examined.

• The Office examines applications on a first-come, first-served basis. If your application is properly prepared, registration will occur as quickly as possible. But if the application is not complete or incorrectly completed, the process will take longer, in which case the speed of registration will depend very much on how quickly you respond to queries and requests for changes.

• You may be granted faster service if you believe that your design has already been imitated by someone else. In such a case, the Office will proceed with examination as soon as you notify the Office in writing, providing details of the infringement.

How long registration lasts

• Registration is for a 10-year term beginning on the date of registration. However, before the expiry of 5 years from that date, a maintenance fee must be paid or the protection will cease. Once the 10-year term has expired, anyone is free to make, import, rent or sell etc., the design in Canada.

Fees

• You must pay a fee to have your application examined by the Industrial Design Office. There are additional fees for maintenance and late payment of the maintenance fee of designs. Fees are subject to change without notice.

Integrated Circuit Topographies

Definition and use

• Semiconductor integrated circuits are at the heart of modern information, communications, entertainment, manufacturing, medical and space technologies, and are now finding their way into items as ordinary as household appliances. The Act and Regulations refer to the "microchips" which embody such integrated circuits as "integrated circuit products".

• Today's integrated circuit products are constructed from a complex series of layers of semi-conductors, metals, insulators and other materials on a substrate. The Act and Regulations refer to the 3-dimensional configuration of these layers as an "integrated circuit topography". The Integrated Circuit Topography Act provides protection against copying of registered topographies, but does not prevent others from developing integrated circuit products which use other topographies to provide the same electronic functions.

• Some integrated circuit products, such as Random Access Memories (RAMs) and Read Only Memories (ROMs) may be used to store sets of instructions for electronic processors. In addition to the protection available for integrated circuit topographies embodied in such integrated circuits, the sets of instructions they store may be subject to protection under the Copyright Act as literary works, and may in some cases be patentable as industrial methods.

• Other aspects of integrated circuit products may also be patentable, for example, the structure and method of operation of electronic circuits embodied in integrated circuit products, or industrial processes used to manufacture integrated circuit products. Indeed, protection available under the Patent Act can be much broader than the protection available under the Integrated Circuit Topography Act, and should generally be considered in addition to protection under the Integrated Circuit Topography Act.

• Protection in other countries should also be considered, particularly where significant market opportunities are expected, or where significant foreign competitors have manufacturing facilities.

Canadian protection for integrated circuit topographies

• Canada's legislation to protect integrated circuit topographies is comparable to that of some other countries. The protection is provided by the Integrated Circuit Topography Act.

• Canada's integrated circuit topography legislation protects the original design of a registered topography, whether it has been embodied in an integrated circuit product or not. Topographies which define only part of the structure needed to perform an electronic function may be registered. For example, topographies which define generic layers of gate array integrated circuit products, and topographies that define interconnection layers which customise gate array integrated circuit products to perform specific electronic functions, may be registered separately.

• A topography will qualify as original if it is developed through the application of intellectual effort, and if it is not produced by the mere reproduction of all, or a substantial part, of another topography. The Act does not protect pre-existing topographies which are commonplace among topography designers or integrated circuit product manufacturers.

• The Integrated Circuit Topography Act provides protection by giving owners of registered topographies exclusive statutory rights to control certain actions. The legislation permits owners of registered topographies to exclude others from:
  • reproducing a protected topography or any substantial part of one;

  • manufacturing an integrated circuit product incorporating the topography or a substantial part of one;

  • importing or commercially exploiting (which includes the sale, lease, offering or exhibiting for sale or lease, or other commercial distribution) a topography or a substantial part of one, or of an integrated circuit product that embodies a protected topography or a substantial part of one;

  • importing or commercially exploiting an industrial article which incorporates an integrated circuit product that embodies a protected topography, or a substantial part of one.

• The Act protects registered integrated circuit topographies for up to 10 years. The term begins on the filing date of the application for registration. The term ends on December 31 of the 10th year after the year of the first commercial exploitation or the year of the filing date, whichever is earlier.

Exceptions

• The exclusive rights listed above are subject to some exceptions, 3 of which are:
  1. One exception relates to the exhaustion of rights applying to integrated circuit products legitimately put on the market anywhere in the world with the authorisation of the owner of the rights. After the first legitimate sale of such a product, the topography owner has no statutory right to control its use, rental, resale or redistribution.

  2. Another exception allows the unauthorised copying of a protected topography for the sole purpose of analysis or evaluation, or for the sole purpose of research or teaching with respect to topographies.

  3. The Act also permits reverse engineering, which is a process of taking apart an integrated circuit to design a new and original topography. The topography created by such a procedure must meet the originality requirements of the Act if it is to be exploited commercially without the authorisation of the original owner of the rights. With this exception, the legislation provides for the suppression of piracy without creating unnecessary obstacles to a free market in semiconductor chips or to the spread of chip technology.

Remedies

• The Act provides for the full range of civil remedies including injunctions, damages and punitive damages. It also provides a defence to innocent infringers, i.e., persons dealing commercially with an infringing integrated circuit product, but unaware, or having no reasonable grounds to believe, that it has been manufactured without authority. After having been notified of the infringement, their liability is limited to the payment of a reasonable royalty with respect to the disposal of integrated circuit products in inventory.

• When a court concludes that there has been importation of integrated circuit products in contravention of the Act, Revenue Canada Customs may be required by the court to stop the entry of such products and of articles which incorporate them, and to arrange disposal of them according to a court order.

Registration

• For the owner of a topography to have rights under the Act, the topography must be registered. The creator of the topography (the owner) or the successor in title may apply for registration of the topography.

• The Registrar of Topographies will not examine a topography to determine originality or compliance with the requirements of the Act. However, the Registrar has authority to reject an application if the creator does not meet the nationality requirements; or, if an application for an "exploited" topography is received more than 2 years after the date of first commercial exploitation anywhere.

• To register a topography, you should obtain the appropriate forms from CIPO, put the appropriate information on the forms, including title or titles of topography, date and location of first commercial exploitation, name and address of applicant, and applicant's interest in the topography, and a description of the nature or function of the topography, and submit the completed forms to the Copyright and Industrial Design Branch of CIPO. It is also possible to submit an application through electronic commerce. The information is available under the title Integrated Circuit Topography, E-Services.

• In addition, you must submit a complete set of overlay sheets, drawings or photographs of the topography. Under certain conditions, some confidential information can be omitted from the drawings or photographs of the topography.

• Please note that the application must be filed within 2 years of the first commercial exploitation of the topography.

Fees

• Fees are charged for various services in relation to the registration of a topography.

Marking

• While marking of integrated circuit products is not obligatory, it is advisable to mark a product with a title corresponding to the registered title or titles. Failure to do so may constitute a valid defence in an infringement action if a defendant can prove having had no knowledge of the registration of the topography.

Glossary of Intellectual Property Terms

• Abandonment
  • An application for trade-mark or copyright registration may be considered abandoned if the applicant does not take steps to complete the process. An application for Industrial design will be considered abandoned if the applicant fails to reply within the specified time to any report that sets out objections to registration.

• Abstract
  • A brief summary of an invention.

• Abuse of Patent
  • Abusing one's patent rights by failing to make one's invention commercially available in Canada without adequate reason.

• Advertisement
  • Publication of a trade-mark application in the Trade-marks Journal. Details are published to allow opportunity for challenges to the application (opposition).

• Allowance
  • Acknowledgement by the Trade-marks Office that an application is eligible for registration. The applicant receives a "Notice of Allowance" (not the same as "Certificate of Registration").

• Application
  • The formal request for registration of intellectual property.

• Artistic work
  • Any visual representation such as a painting, drawing, map, photograph, sculpture, engraving or architectural plan.

• Assignment
  • Transfer of intellectual property rights from the owner to another party.

• Author
  • The creator of an artistic, literary, musical or dramatic work.

• Berne Copyright Convention
  • An international treaty extending copyright protection in member countries to nationals of other member countries. Canada is a signatory to this treaty.

• Canadian Intellectual Property Office (CIPO)
  • Federal agency responsible for the administration of intellectual property laws (includes Copyright Office).

• Canadian Patent Database
  • Allows a preliminary search via the Internet of the bibliographical information on issued patents and applications made public in Canada since 1920.

• Canadian Patent Office Record
  • The Canadian Patent Office Record is a weekly publication that contains various important notices and information on newly issued patents, laid-open applications, Patent Cooperation Treaty (PCT) applications entering the national phase, and patents that are available for licence or sale.

• CANCOPY
  • A reprography collective that grants licences to photocopy works and collects fees on behalf of its members.

• Certificate of registration
  • Official confirmation that your design, copyright or trade-mark has been registered.

• Certification marks
  • Marks identifying goods or services meeting a defined standard (e.g., Wool Mark on clothing).

• Claims
  • The basis for filing an application that allows for the determination of the person entitled to the registration of the mark.

• Clearly descriptive
  • A mark that clearly describes a feature of a ware or service and that is therefore not registrable as a trade-mark.

• Collective
  • Organisation that administers rights granted by the copyright system on behalf of copyright owners who have joined that collective.

• Compulsory licence
  • The right granted by the Commissioner of Patents to one or more parties to produce a patented invention. These are granted under certain circumstances as a measure against abuse of patent rights.

• Copyright Act
  • Federal legislation governing copyright in Canada.

• Copyright Board of Canada
  • A tribunal that reviews and must approve all tariffs and fees proposed by the SOCAN, the Canadian performing rights society. The Board can also set royalties when asked to do so by either a collective or a user of a collective's repertoire.

• Copyright infringement
  • Violation of copyright through unauthorized copying or use of a work or other subject matter under copyright.

• Copyright Office
  • The federal government office responsible for registering copyrights and agreements affecting a copyright in Canada.

• Copyrights
  • Provide protection for literary, artistic, dramatic or musical works, computer programs, and sound recordings.

• Crown copyright
  • Copyright of works prepared for or published by the government, i.e., government publications.

• Deceptively misdescriptive
  • A mark that deceptively misdescribes a feature of a ware or service in such a way as to potentially mislead the consumer is not registrable as a trade-mark.

• Declaration
  • Copyright: Formal statement that the applicant is the author, the owner of the work, an assignee or a person to whom an interest in the copyright has been granted by licence.

  • Industrial Designs: Formal statement that you are the proprietor of the design and that, to your knowledge, no one else was using the design when you created it.

• Description
  • A description is a basic requirement of an application for an industrial design. It identifies the features of shape, configuration, pattern or ornament that distinguish the design, and indicates whether the design resides in the entire article or a portion.

• Design patent
  • The term used in the United States to describe a form of protection similar to that of industrial design protection in Canada.

• Disclaimer
  • A statement that the applicant does not claim exclusive rights for a portion of the trade-mark.

• Distinguishing guise
  • The unique shape of a product or package that can be registered as a trade-mark.

• Dramatic work
  • Includes plays, screenplays, scripts, films, videos and choreographic works as well as translations of such works.

• Drawings
  • Drawings (or photographs) disclose the industrial design and are a basic requirement of a design application.

• Examination
  • Trade-marks: The process through which the Trade-marks Office determines whether an application for trade-mark is registrable.

  • Industrial Designs: The process through which the Industrial Design Office determines whether a design warrants registration. The main objective is to determine whether the design is indeed design subject matter, that it is original, and that the documentation meets the requirements of the Acts and Rules.

  • Exception: A provision in a copyright law permitting the use of a work by defined user groups without the consent of its creator or without the payment of royalties, conditions that would normally constitute an infringement of copyright. Examples of user groups benefiting from exceptions are educational institutions, libraries, museums, archives and persons with a perceptual disability.

• Fair dealing
  • Use of works for purposes of private study, research, criticism, review or news reporting that does not constitute infringement of copyright.

• Fees
  • Specific sums payable for various services provided by CIPO.

• First to file
  • A patent system in which the first inventor to file a patent application for a specific invention is entitled to the patent. In Canada and in most other countries, the first person to file has priority over other people claiming rights for the same invention.

• Industrial design
  • The visual features of shape, configuration, pattern or ornament applied to a manufactured article. Registration provides protection against imitation and unauthorized use of the design.

• Industrial Design Act
  • Legislation governing registration and ownership of industrial designs in Canada.

• Industrial Design Office
  • The federal office responsible for registration of industrial designs.

• Infringement
  • Patents: Making, using or selling an invention protected by a patent without the inventor's permission.

  • Trade-marks: Violation of trade-mark rights through unauthorized use of a trade-mark.

  • Industrial Designs: Violation of industrial design rights through unauthorized use of a design.

• Integrated circuit topography
  • The 3-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

  • Legal protection against imitation of this configuration.

• Intellectual property
  • A form of creative endeavour that can be protected through a trade-mark, patent, copyright, industrial design or integrated circuit topography.

• Licence
  • Legal agreement granting someone permission to use a work for certain purposes or under certain conditions. A licence does not constitute a change in ownership of the copyright.

• Licensee
  • If an entity is licensed by or with the authority of the owner to use the mark, and the owner has direct or indirect control over the character or quality of the wares or services with which the mark is used, then the licensee's use of the mark or a trade-name including the mark is deemed to have, and to always have had, the same effect as use by the owner.

• Licensing a design
  • Granting of an exclusive licence from the owner of the design to another party that allows said party to manufacture, use and sell the design, and to sub-licence others to do so.

• Licensing an invention
  • Allowing a business or individual to manufacture and sell an invention, usually in exchange for royalties.

• Literary work
  • Work consisting of text such as novels, poems, song lyrics without music, catalogues, reports, tables as well as translations of such works. It also includes computer programs.

• Maintenance fee
  • Patents: Annual fee to keep a patent (or applications on patents filed or issued after 1989-10-01) in good standing.

  • Industrial Designs: Fee required in order to maintain the rights to an industrial design for a second 5-year period for designs registered after 1994-01-01.

• Marking
  • Trade-marks: Canada's Trade-marks Act does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, such as R in a circle (registered), TM (trade-mark), SM (service mark), MD (marque déposée) or MC (marque de commerce).

  • Copyrights: Indicating copyright with a small "c" in a circle (©), the name of the copyright owner and the year of first publication.

  • Industrial Designs: Signalling that a design is registered by placing a capital "D" in a circle along with the name, or abbreviation thereof, of the design's proprietor on the object to which the design has been applied, or to its label or packaging.

• Moral rights
  • Rights an author retains over the integrity of a work and the right to be named as its author even after sale or transfer of the copyright.

• Musical work
  • Work that consists of music plus lyrics or music only.

• Nom-de-plume
  • A name used by a writer instead of his or her real name.

• Opposition
  • The process whereby members of the public may object to the granting of a trade-mark registration if they have valid grounds for doing so.

• Paris Convention for the Protection of Industrial Property
  • An international treaty on intellectual property signed by some 90 nations, including Canada.

• Patent
  • A government grant giving the right to exclude others from making, using or selling an invention.

• Patent Cooperation Treaty
  • An international treaty providing for standardised filing procedures for foreign patents in the countries that have signed the treaty.

• Patent examiner
  • An official with technical expertise charged with the task of classifying a patent or an application, or of determining whether a patent application fulfils the requirements for a grant of patent.

• Patent Office
  • Canada's patent granting authority and disseminator of patent information.

• Patent Office Action
  • An official written communication by the Canadian Patent Office on the merits of an application.

• Patent pending
  • A label sometimes affixed to new products informing others that the inventor has applied for a patent and that legal protection from infringement (including retroactive rights) may be forthcoming.

• Performers and producers rights
  • A term used to indicate rights of performers and sound recording producers to be remunerated when their performances and sound recordings are performed publicly or broadcast. Also referred to as "neighbouring rights".

• Performing Rights Society
  • An organisation that administers rights to perform musical works on behalf of composers, lyricists, songwriters and music publishers. (See SOCAN.)

• Place of origin
  • A word or depiction that designates the origin of a product or service and that therefore may not be registered as a trade-mark.

• Plagiarism
  • Using the work (or part of it) of another person and claiming it as your own.

• Plant breeders' denomination
  • A plant variety denomination is a right that is granted to the owner for the control over the multiplication and sale of reproductive material for a particular plant variety.

• Posthumous work
  • A work that is published for the first time (or, for certain types of works, published, performed or delivered in public for the first time) after the author's death.

• Pre-publication verification
  • A second search of Trade-marks Office records to ensure that no confusing trade-marks exist before a given application is published in the Trade-marks Journal.

• Preferred Embodiment
  • An explanation, in a patent application, of the most appropriate and useful practical applications of an invention.

• Preliminary search
  • The search of Trade-marks Office records that one should undertake before submitting an application for trade-mark registration. The search may turn up conflicting trade-marks and show that the application process would be in vain.

• Prior art
  • Industrial Designs: The body of registered industrial designs or other published designs including catalogues, manuals and other publications throughout the world relevant to the application for registration of a design.

• Private copying
  • Copying of pre-recorded musical works, performers' performances and sound recordings into a blank medium, such as audio tape or cassette, for personal use.

• Private Copying Levy
  • An amount of money established by the Copyright Board on blank recording media, whether made here or imported, by manufacturers and importers and is then sold in Canada redistributed to eligible composers, lyricists, performers and sound recording makers through their professional associations and collectives.

• Prohibited marks
  • Marks that are specifically prohibited from use as defined in section 9(1) of the Trade-marks Act

• Proposed use
  • A statement indicating intention to use a certain trade-mark and how that use will occur.

• Proprietor
  • The proprietor of an industrial design is the owner of the design. This can be the person who created it or who paid to have it created or who bought the design rights from the original owner.

• Prosecution
  • All the steps involved in completing a patent application.

• Protected geographical indication
  • A geographical indication is an indication that identifies a wine or spirit as originating from a territory where a quality, reputation or other characteristics of the wine or spirit are essentially attributable to its geographical origin and that is listed on the List of Geographical Indications kept by the Registrar.

• Publication
  • Making copies of a work available to the public. The construction of an architectural work and the incorporation of an artistic work into an architectural work are considered publication.

• Registered Patent Agent
  • A specialist entitled to prepare and prosecute patent applications.

• Registered trade-mark
  • A trade-mark entered on the federal government's Trade-marks Register, which formally recognizes the owner's rights to the mark.

• Registrar of Copyrights
  • The official responsible for the Canadian Copyright Office.

• Registrar of Integrated Circuit Topographies
  • The official responsible for the Canadian Integrated Circuit Topography Office.

• Registrar of Trade-marks
  • The official responsible for the Canadian Trade-marks Office.

• Registration
  • The granting of formal recognition of a trade-mark, copyright, industrial design, or integrated circuit topography by the Trade-marks, Copyright, and Industrial Design Office respectively.

• Renewal fee
  • Trade-marks: Fee required in order to renew a trade-mark registration for an additional fifteen-year period.

  • Industrial Designs: Fee required in order to renew the rights to an industrial design for a second 5-year period for designs registered prior to 1994-01-01.

• Representative for service
  • A person in Canada appointed by the applicant or registered proprietor to receive documents on his/her behalf.

• Rome Convention country
  • A country that is party to the international convention for the protection of performers, producers of phonograms and broadcasting organisations done at Rome on 1961-10-26.

• Royalty
  • A sum paid to copyright owners for the sale or use of their works, or other subject matter.

• Search
  • The act of searching through intellectual property records in order to verify whether a patent, trade-mark or industrial design has been previously filed or registered.

• Small entity
  • "Small entity" in respect of an invention, means an entity that employs 50 or fewer employees or that is a university.

• SOCAN
  • The Society of Composers, Authors and Music Publishers of Canada. SOCAN is the only performing rights society in Canada.

• Sound recording
  • A device which produces sounds, such as cassette, record, or CD player.

• Special Order Examination
  • A request to the Patent Office for early consideration of a patent application.

• Specification
  • Part of the patent application. It includes a detailed description of the invention, claims specifying the aspects of the invention for which protection is sought, and the extent of the protection being sought.

• Tariff
  • A standard charge for use of copyrighted works. Usually applies to fees paid by users of musical works and cable companies for the rebroadcast of programs.

• TechSource
  • TechSource is an electronic patent system that holds the scanned images of over 1.3 million patent documents dating back to 1920 and the text version of patent documents from 1978.

• Trade name
  • The name under which a company chooses to operate. Trade names may or may not be considered trade-marks, depending on the circumstances.

• Trade secret
  • Information about a product or process kept secret from competitors.

• Trade-mark
  • A word, symbol or design, or combination of these, used to distinguish the goods or services of one party from those of another.

• Trade-mark agent
  • A trade-mark agent is a person whose name is entered on the list of trade-mark agents and who is therefore entitled to practice before the Trade-marks Office.

• Trade-marks Act
  • Federal legislation governing trade-mark registration in Canada.

• Trade-marks Journal
  • A publication of the Trade-marks Office issued weekly and containing all approved applications and Office rulings.

• Trade-marks Office
  • The federal agency responsible for registering trade-marks in Canada.

• Trade-marks records
  • The inventory of registered trade-marks and pending applications maintained by the Trade-marks Office at its premises in Gatineau (Quebec).

• Trade-marks register
  • The official listing of registered trade-marks.

• Universal Copyright Convention
  • A country that is party to the Universal Copyright Convention, adopted on 1952-09-06 in Geneva, Switzerland, or to that convention as revised in Paris, France, on 1971-07-24.

• WTO member country
  • A Country that is a member of the World Trade Organisation as defined in subsection 2(1) of the World Trade Organisation Agreement Implementation Act.

Sample Multiple Choice Questions & Answers

Questions

1. Which of the following items cover new inventions (machine)?
   1. Patents
   2. Trade-marks
   3. Copyright
   4. Industrial designs

2. Which of the following items provide protection for musical works?
   1. Patents
   2. Integrated circuit topographies
   3. Plant breeders' rights
   4. Copyright

3. Which level of government administers intellectual property in Canada?
   1. Provincial government
   2. Government of Canada
   3. Municipal government
   4. United Nations

4. Does a patent in Canada protect my rights in other countries?
   1. No
   2. Yes, in the United States
   3. Yes, in the United Kingdom
   4. Yes, everywhere

5. How long is a patent effective?
   1. 5 years from the date the application was first filed
   2. 10 years from the date the application was first filed
   3. 20 years from the date the application was first filed
   4. 15 years from the date the application was first filed

6. Is trade-mark registration mandatory?
   1. Yes
   2. No
   3. Yes, if the trade-mark is a word
   4. Yes, if the trade-mark is a symbol

7. How do I register a copyright?
   1. You must file an application with the Trade-marks Office
   2. You must file an application with the Patent Office
   3. You must file an application with the Registrar of Integrated Circuit Topographies
   4. You must file an application with the Copyright Office

8. To which of the following items does copyright not apply?
   1. A novel
   2. A play
   3. The idea for a plot
   4. A magazine article

9. How long does registration for an industrial design last?
   1. 20 years
   2. 30 years
   3. 10 years
   4. 40 years

10. How do I obtain integrated circuit topography protection?
    1. You can obtain protection by submitting an application to the Registrar of Integrated Circuit Topographies
    2. You can obtain protection by submitting an application to the Patent Office
    3. You can obtain protection by submitting an application to the Trade-marks Office
    4. You can obtain protection by submitting an application to the Copyright Office

Answers

1. a
2. d
3. b
4. a
5. c
6. b
7. d
8. c
9. c
10. a

Bibliography

• Listed below, in no specific order, are the sources from which this study guide was constructed. In most, but not all, the selections were made from the latest editions available to the author. Needless to say, the author and editors assume no responsibility for the accuracy with which these sources were originally printed. This list therefore, is neither critical nor annotated; it is included for the convenience of the student.

• Canadian Intellectual Property Office (CIPO)
  • http://strategis.ic.gc.ca/sc_mrksv/cipo/

• Intellectual Property Institute of Canada (IPIC)
  • http://www.ipic.ca/

• A Guide to Patents
  • Canadian Intellectual Property Office (CIPO)
  • 2001-11

• A Guide to Trade-marks
  • Canadian Intellectual Property Office (CIPO)
  • 2001-11

• A Guide to Copyrights
  • Canadian Intellectual Property Office (CIPO)
  • 2000-01

• A Guide to Industrial Designs
  • Canadian Intellectual Property Office (CIPO)
  • 2001-04

• A Guide to Integrated Circuit Topographies
  • Canadian Intellectual Property Office (CIPO)
  • 2001-01