1. Intellectual property (IP): the basics
IP: what’s in it for you?
Speaker Notes: Prepare a 90-second attention grabber by asking your audience questions or telling a short story.
Good evening (morning, afternoon).
My name is:
I work (am a partner) with the firm of…
Today I am speaking to you on behalf of the Canadian Intellectual Property Office, or CIPO, and the Intellectual Property Institute of Canada, or IPIC.

2. Objectives
Recognize the strategic value and benefits of intellectual property (IP)
Understand the various forms of IP
Learn how to protect and use your IP
Discover a wealth of IP resources
The objective of this presentation is to give you a better understanding of what intellectual property or IP is and how to make the most of your inventions, creations and concepts by protecting them with IP.
This presentation will allow you to:
recognize the strategic value and benefits of IP;
understand the various forms of IP;
learn how to protect and use your IP; and
become aware of valuable IP resources.

3. IP: what’s in it for you? IP is a valuable business asset
IP information and protection may help you avoid costly mistakes
IP gives you an edge over the competition
IP can be sold, licensed or traded
Speaker note: These are the three key messages to be conveyed to the audience throughout this presentation.
Intellectual property is one of your most valuable business assets. When used strategically in your business, IP can increase your competitiveness and allow you to reap numerous benefits.
Intellectual property gives you a business edge since competitors or potential business partners can only use your protected IP with your permission.
As well, accessing proper intellectual property information helps you avoid the risk of infringing on someone else’s IP. This is done by conducting an IP search and getting proper infringement advice from a registered IP professional. It is crucial to act early in order to avoid unnecessary conflicts with other enterprises that can result in a loss of resources.

4. Benefits of IP information
Identify trends
First look at the competition
Identify key contacts
Find solutions to problems
Avoid duplication of effort
Prevent infringement
Here are some other benefits that can come from accessing IP information.
If you are a business person, researcher, engineer or student, a search through IP documents can help you:
identify trends and developments in a specified field of technology or commerce;
discover new product lines available through an IP owner or otherwise;
keep track of the work of a particular individual or company by seeing what IP they have applied for or have been granted;
identify useful marketing and manufacturing contacts and a list of owners;
find a solution to a technical or commercial problem;
find information that prevents duplication of research efforts; and
prevent infringement.
Keep in mind that your competitors may also be using information in IP documents to their advantage.
Speaker: Give an example showing the strategic value of IP by telling a success story.

5. Common forms of IP Trade secrets Patents Trade-marks Copyrights
Industrial designs
Speaker note: Please advise the audience that this presentation is not intended to replace the legal advice of their intellectual property advisor.
If it has value, the next question should be how to protect and enhance that value. Do you keep it secret? Do you disclose the intellectual creation in exchange for exclusive rights to exploit it for a period of time, as with a patent? Is the value in how the intellectual creation is expressed, which is covered by copyright? Is it in the design of a product, which is covered by industrial design, or in an identifying word or logo, as with a trade-mark?

6. Trade secrets
Let’s discover the different categories of intellectual property by beginning with trade secrets.

7. What is a “trade secret”?
Any confidential information used in a business that provides a competitive edge and can be kept secret
The confidential information can be:
specific product information
business information
A trade secret is any secret that has some value and is used in business, industry or trade.
Trade secrets often go hand in hand with other forms of intellectual property as part of an overall IP strategy.
Most intellectual property starts as a trade secret—an intellectual creation in somebody’s mind that may have competitive value.
• Specific product information examples:
Formula.
Pattern.
Device.
Compound.
Process.
• Business information examples:
Customer lists.
Supplier lists.
Pricing.
Business plans.
Know-how.

8. Trade secret protection
Trade secrets are protected by confidentiality and licence agreements
Protection lasts forever, as long as confidentiality is maintained
If the trade secret is disclosed, protection is lost
The essential element of trade secret protection is that it remains secret. This can be done through physical and organizational procedures such as access controls, locking up confidential documents, or legal agreements such as confidentiality and licence agreements.
A trade secret can potentially last forever. This can be the greatest benefit of a trade secret.
For example, the original formula for Coca-Cola was developed more than 100 years ago. It is still a secret.
But this is also the greatest vulnerability of trade secrets. The moment confidentiality is lost, so is its value.
Generally, protection is lost if the trade secret is disclosed or if it is independently developed by someone else.

9. Patents

10. The “deal” of the patent
The owner provides a full public disclosure of the invention
The Canadian government provides a grant of exclusive rights in Canada to the owner for 20 years from the date of filing
Granting of a patent is not automatic.
The Patent Act provides a means for obtaining exclusive rights on an invention in exchange for a full description of the invention so that all Canadians can benefit from this advance in technology and knowledge.
Protection granted is only in Canada. A separate application must be filed in each country for which protection is desired.

11. What is patentable? Product Composition Machine Process
… or its improvement
The invention must be new, useful and non-obvious
A patentable 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), a process (a method for making door locks), or an improvement on any of these.
Non-patentable subject matter includes, for example, pure mathematical equations or methods of medical treatment on the human body (although some medical tools may be patented).
Once you know you have a patentable subject matter, you can verify if your invention is patentable according to the three main patentability criteria:
Novelty. An invention is not new if it was already known to the public. Novelty is global, meaning someone cannot patent an item in Canada if, for example, it is already sold in Asia by someone else.
Usefulness. An invention is useful if it has industrial or commercial value in a manner that benefits the public. Inoperable machines, such as perpetual motion machines, are not useful.
Non-obviousness, often called ingenuity. It requires that the invention meets a minimum threshold of innovation.

12. Patenting process Prior to filing an application: Patent application:
Keep your invention confidential
Search patent databases and scientific literature
Consult a registered patent agent
Patent application:
Draft and file
Request examination
Respond to CIPO’s objections, if any
Consider the following prior to filing an application:
In order to be considered novel there must be no public disclosure of the invention prior to filing the application even by the applicant him/herself.
There is a one-year grace period in Canada and the United States to file an application after a first public disclosure of the invention by the applicant. This grace period does not exist in other countries.
Two searches should be made: (a) initial search by applicant and (b) preliminary patentability search by a registered patent agent. The purpose is to determine likelihood that an eventual application for patenting the invention would be allowable.
Patent application:
To obtain a patent in Canada, a patent application must be filed with CIPO.
Early in the process, consider consulting a registered patent agent who can ensure you realize the full potential of your invention.

13. Trade-marks

14. What is a trade-mark? Word(s) KODIAK Word and design Design
Slogan “ZOOM-ZOOM”
A trade-mark is a word, design, sound or combination of these used to identify the goods and services of one person or organization.
Speaker note: When going over the trade-mark examples on this slide, feel free to provide other examples of trade-marks in the specific field of the audience.
Reproduction courtesy of Kodiak Group Inc.; Hasbro, Inc.; Schering-Plough Healthcare Products, Inc. All rights reserved; Mazda Motor Corporation.

15. What is a trade-mark? (continued)
Shape 
Sound 
Certification mark 
The shaping of the goods or their containers or the mode of packaging goods may be registrable. It is called a distinguishing guise.
There are also what are termed “non-traditional” marks that may or may not be registered in Canada. Sounds, smells and three-dimensional marks are all registrable in various jurisdictions.
Certification marks identify goods or services that meet a defined standard. They are owned by one person but licensed to others. Examples include the Woolmark design owned by The Woolmark Company for use on clothing and other goods and the logo of the Association of Professional Engineers.
Reproduction courtesy of (bottle & design) Coca-Cola Ltd.; Metro-Goldwyn-Mayer Studios Inc.; (Woolmark design) The Woolmark Company.

16. Trade-mark protection and registration
Registered Not registered
Geographic coverage Coverage is regional across Canada
Period is 15 years, Period of use is to
renewable be proven
Present in the Not present in the
Trade-mark Register Trade-mark Register
Registration serves as Ownership to be proof of ownership demonstrated and defended
In Canada, even without registration a trade-mark owner may have acquired rights through use of the mark (common law rights). This type of protection occurs when you start using your trade-mark in the marketplace. Trade-mark rights reside with the owner of the mark.
For Canada you need to register your trade-mark with the Canadian Intellectual Property Office (CIPO). Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. Trade-mark registration is national in scope; to protect a trade-mark in other countries, you must apply separately in each country.
There are numerous business risks, particularly financial, associated with using a trade-mark. You should consult a registered trade-mark agent before you adopt, use or seek to register a mark.
Registered trade-mark agents also provide valuable advice on enforcing your trade-mark rights as well as strategic counselling on trade-mark protection and policing and trade-mark portfolio management.
You can view a list of registered trade-mark agents on CIPO’s website.
If a trade-mark is not registered, its coverage is limited to the region where it is used.

17. Use it or lose it Control all use (distributors/retailers/licensees)
License use to others
Avoid generic use
Stop unlicensed use
Maintain continuous use
Definition of “use” as per Trade-mark Act: “use” in relation to a trade-mark means any use that by section 4 is deemed to be a use in association with wares or services.
To preserve one’s trade-mark it is necessary to use the trade-mark as registered. One should not tamper with the mark as registered to create numerous variations.
A trade-mark is a mark used to distinguish the goods and services of one person from those of others and should not be used as generic terms. For example, OREO and KLEENEX are trade-marks, not generic terms.
If the mark is to be used by others with your approval and consent, then that use should be formally licensed so that you do not chance losing the distinctiveness of your mark. Marks that are permitted for use by others without licence may affect the distinctiveness of the mark, making it difficult to enforce your rights against infringers. Lawsuits can be very expensive but failing to stop trade-mark misuse can result in the loss of the mark altogether. That may even be more expensive or damaging to your business.
How to avoid trade-mark misuse? When misuse is detected, the misuser must be notified promptly. If misuse continues, further legal action may be taken. The Trade-marks Journal and database available on CIPO’s website are good resources to discover attempts to register similar trade-marks.
There are no marking requirements in Canada. You should consult with a registered trade-mark agent if you wish to identify your trade-mark with a specific marking (you may have seen the “r” in the circle that indicates a mark registered in the US).

18. Copyrights

19. What is copyright?
It is the exclusive right to produce or reproduce a creation
Literary
Dramatic
Musical
Artistic
Copyright protects the expression of an idea or intellectual creation; it does not protect the idea itself. For example, if you write a recipe for a cake you have the exclusive right to publish and copy the recipe. But anyone can use the recipe to bake a cake.
Similarly, the author of a computer program has the exclusive right to it but not to the underlying functions or mathematical calculations.
Copyright is not limited to things we normally think of as “creative” works such as novels, movies and music. The actual categories of works protected by copyright are very broad.
Examples of works that are protected by copyright:
Business plans, advertising and marketing materials.
Computer programs.
Audio-visual works.
Training manuals.
Blueprints and mechanical drawings.
Artistic element of logos and graphical designs.

20. Copyright registration
and protection
Copyright is automatic upon creation and registration provides a legal advantage
Only form of protection that is world-wide
Use proper marking: © owner’s name, year
Term is generally life of author plus 50 years
When a work is created, copyright arises automatically under international treaties and Canadian law. However, the owner should take steps to ensure that copyright isn’t lost.
You register a copyright by completing an application and sending it to the Copyright Office at CIPO along with the appropriate fee. An application form and instructions can be downloaded from CIPO’s website. You may file by mail, in person, or electronically. The registration process normally takes ten working days. The fee covers registration and the issuance of the official certificate of registration.
A copyright registration is prima facie proof of ownership that can be presented in court. Registration can also help win an award of damages and the defendant cannot claim “innocent infringement”—that they didn’t know there was a copyright.
There is no requirement to mark your work under the Copyright Act. The Universal Copyright Convention provides for marking with the symbol ©, the name of the copyright owner and the year of first publication: for example, © Jane Doe, Although not obligatory in Canada, such marking can serve as a reminder to others of a copyright as well as providing the name of the owner.
Some countries that are members of the Universal Copyright Convention but not of the Berne Copyright Convention require such marking. You may use this notice even if you have not registered your work.
The term of copyright is generally life of the author plus 50 years. Common exceptions are joint works (50 years from the death of the last surviving author); anonymous works; posthumous publication and movies (50 years from publication); and photographs (generally 50 years from creation if owned by a corporation and life plus 50 years if owned by the photographer).

21. Industrial designs

22. What is an industrial design?
The visual features of shape, configuration, pattern or ornament, or any combination of those features applied to a manufactured article
An industrial design is different from a patent, which protects the functional elements.
Examples:
Shapes of bottles or other containers.
Ornamentation on clothing or footwear.
Shape of the body of a vehicle.
Electronic icons.

23. Industrial design registration and protection
Industrial designs must be registered for protection
Keep confidential prior to filing
Search, file with CIPO and await a response
Design registration provides a maximum of ten years of protection in Canada
An industrial design must be registered in order to be protected. In Canada the protection is available for ten years, subject to a maintenance fee at the five-year mark. In the US, protection is for 14 years and up to 25 years in some European countries.
Speaker note: You may wish to mention that marking is not a requirement in Canada but it may allow for pecuniary compensation if infringement is determined by the Court. Without a marking, only an injunction obliging others to stop infringing may be granted.

24. Summary of IP forms Protect Application required Term Trade secrets
Confidential information
N/A
indefinite
Patents
Inventions
yes
Up to 20 years from date of filing
Trade-marks
Words,logos, slogans, sounds
recommended
15 years, renewable
Copyrights
Writings, music, art, plays, etc.
life + 50 years (many exceptions)
Industrial designs
Visual features
up to 10 years

25. What is infringement?
In general, use by any unlicensed party is considered infringement
An owner is responsible for stopping unlicensed use
Could become a business opportunity (i.e., results in a partner, a distributor, a client, etc.)
In general, use by any unlicensed party is considered infringement.
An owner is responsible for stopping unlicensed use.
If someone infringes on your IP, it may be the start of a business opportunity resulting in a license, a new market, a new partner, distributor, client, etc.
Speaker note: you may want to share an example.

26. Dispute resolution Resolution mechanisms could include:
direct negotiation
mediation
arbitration
opposition
litigation
Disputes can arise regarding IP security interests, licences, or assignments. IP disputes can also arise concerning the creation, existence, ownership, or infringement of IP.
An IP dispute is not necessarily a bad thing. It can instead be viewed by each side in the dispute as an opportunity to take stock of and improve on their IP situations. Contact a registered IP professional to help you solve and maximize your benefit from an IP dispute.
When it comes to finding an arbitrator or mediator for an IP dispute, the publicly accessible part of IPIC’s website has a list of IP arbitrators and IP mediators and also has summaries about dispute resolution organizations.
Very few disputes end up in court. In fact, people will prefer to settle the matter as rapidly as possible.
Speaker note: you may want to share some statistics from your own experience.

27. Summary
IP is a valuable business asset and appeals to consumers and investors
Using IP system helps avoid costly mistakes
IP information is an immense source of business and technology information

28. What should you do next?
This has been an introduction to some of the benefits of IP protection.
CIPO and IPIC encourage you to find out more about how to protect and increase the value of your intellectual property assets.
Both IPIC and CIPO are committed to increasing knowledge of IP in Canada and have many resources to inform and guide you.

29. Capitalize on your IP Learn more about IP:
Search Canadian and international online databases
Consult a registered IP professional
CIPO’s website contains a wealth of IP resources.
Under the Learn about IP link you will find the following:
Stand out from your competitors.
IP Toolkit.
Trade-marks Database Tutorial.
Under the Publications link you will find guides for each IP type.
Searching other IP databases may be useful in order to find if an invention or a design is new in the world, or if they can be registered in another country. You will find links to most of the IP offices in the world by consulting International IP Links on CIPO’s website.
For a thorough search, it is advisable to hire a professional intellectual property searcher. A list of registered agents can be found by clicking the patent and trade-mark links on CIPO’s website.

30. Contact us Canadian Intellectual Property Office (CIPO)
Intellectual Property Institute of Canada (IPIC)
Learn more about IP basics
Consult databases
Consult a registered patent or trade-mark agent
CIPO and IPIC can help you turn your creations into valuable assets and give you an edge over the competition. You can also find out what’s new in the marketplace and maximize the value of your inventions, creations and concepts by protecting them.
CIPO is a special operating agency (SOA) of Industry Canada (IC). CIPO grants IP rights within an IP administrative framework made up of legislation, regulations and office practices. Specifically, CIPO is responsible for the granting or registering of patents, trade-marks, copyrights, industrial designs, and integrated circuit topographies.
The Intellectual Property Institute of Canada (IPIC) is a national association with more than 1,700 members from Canada and abroad. IPIC is the only professional association in Canada to which nearly all patent agents, trade-mark agents and lawyers specializing in intellectual property belong.

31. 31 31