Your clever client, Mr. Brainstorm, comes into your office and tells you he has a great new idea that he thinks could make him a lot of money. He’s even brought a sample to show you. Out of his bag he pulls this strange looking object: the bottom half is a shampoo bottle bent into a crescent shape, the top has a garden hose nozzle.
“I call it the Mega Washer 3000,” he says. “I’ve combined a traditional shampoo bottle with a garden hose nozzle, made a few extra modifications, and voila! we have a super shampoo bottle. The Mega Washer 3000 allows you to pre-set the amount of shampoo you want. And you can dispense it directly on your head. No hassle! I’ve even created a promotional brochure for it. Now what should I do to protect my idea?”
What would you do, without having to call the only intellectual property (“IP”) lawyer you know?
This article gives a short primer on IP law and outlines the due diligence needed to advise the Mr. Brainstorms of your practice. There are four main kinds of IP: patents, trademarks, copyright, and to a lesser extent, industrial designs. Intriguingly Mr. Brainstorm’s product has all four.
What is a patent?
Patents provide protection to inventions that are new, non-obvious and useful. Patentable inventions are not limited to physical things like machines, or chemicals, but also include processes and methods (e.g. ways of doing things). Some subject matter is excluded from patentability, such as methods of medical treatment and scientific principles. Other subject matter, such as methods of conducting business, are treated on a case by case basis.
A actual patent has several parts to it, including a “disclosure” that describes the invention and how it works, and a set of “claims” that spells out precisely what is protected by the patent. The bargain of the patent system is that the inventor is given a monopoly over what has been claimed for the life of the patent in exchange for disclosing to the public how the invention works. Once the patent expires, anyone should then be able to make the same successful use of the invention as the inventor. Consequently, some inventors prefer not to file an application and keep their innovation a trade secret. A famous example is the recipe for Coke.
A patent must identify the inventors. Therefore, you should establish early on who the inventors are. Ask your client questions about they each inventor contributed to the invention. Anyone who merely carries out instructions is not likely an “inventor”.
Term and application process
Patents do not exist at common law and only come into being through an application process. The term of a patent is 20 years from when the application is filed. A patent application, after it is filed in the Canadian Intellectual Property Office, is reviewed by an examiner in the Office to determine whether it satisfies the requirements for a patent. The examiner may require amendments be made to the application before agreeing to issue the application to patent or may ultimately reject the application. This application process typically take a few years.
Patents must be obtained in each country in which protection of the invention is sought. In some regions, like Europe, there is an option to file a central, regional application that would cover more than one country. There are also international treaties that allow applicants to file in a first country and, within a certain time period, to file in other countries and get the benefit of that first filing date.
Novelty, non-obviousness, and utility
As mentioned above, a patentable invention must be new, non-obvious, and useful. To be “new”, the main elements of the invention must not have been anticipated by having been previously, publicly disclosed in a single reference (called “prior art”) anywhere in the world. In other words, someone else must not have come up with it first and disclosed it to the public. The prior art does not have to be a physical embodiment of the invention, it can simply be a written description of it. To anticipate an invention, the disclosure must also enable someone working in the field of the invention (the “person skilled in the art”) to perform the invention.
The invention must also not be obvious, or in other words, the invention would not have occurred directly and without difficulty to the person skilled in the art in light of all the prior art at the time of the application.
If we take Mr. Brainstorm’s idea, we know that shampoo bottles and hose nozzles already existed. But had anyone modified a shampoo bottle and combined the elements like he had? If not, was it obvious to someone in the haircare bottling industry to do it? To get at some of these answers, you need ask your client about their knowledge of what had come before. To go a step further, you should also suggest a search of the prior art to dig up any relevant public disclosures. The extent of the prior art search will depend on how much your client wants to spend, their knowledge of the industry, and their risk tolerance.
It is also important to find out whether your client has made any public disclosure of the invention, or whether they intend to do so in the near future, for example at a tradeshow. In Canada and the United States, if an inventor discloses the invention to the public before filing an application, they have one year to file a patent application, otherwise their own disclosure will preclude them from getting a patent. In almost all other countries, there is no such grace period and a public disclosure by the inventor anywhere before filing will terminate any right to get a patent .
With respect to utility, the threshold is normally quite low. A “mere scintilla” of utility will usually do. However, if the inventor promises in the patent that the invention will accomplish a certain result then the invention, as claimed, must in fact be able to fulfill that promise. If not, the invention will lack the utility required and be invalid.
What is a trademark?
A trademark is something that a person uses to distinguish their goods or services from the goods or services of others. A trademark can take several forms, the most common being a word (e.g. PEPSI) or a design (e.g. Pepsi’s logo), but trademark rights can exist in other things, such as the shape of an object (the Coke bottle), or even a sound (e.g. the MGM Lion’s Roar).
Registered and unregistered marks
Trademarks can have rights in Canada arising from registration in the Canadian Intellectual Property Office or from common law based on use in the marketplace.
An application to register a trademark must specify the goods (i.e. hair care preparations) and/or services (e.g. hair salon services) with which the owner uses or intends to use the mark. When the mark registers, the owner is then given the exclusive right to use the mark with those goods and services anywhere in Canada. In other words, a registration can be used to stop a competitor from using the trademark with those goods and services. A registration can also be used to stop others from using a “confusingly similar” trademark in Canada. What is “confusingly similar” will depend on a number of factors such as how closely the marks resemble each other, the distinctiveness of the trademarks, and the similarity of the goods and services. Registrations are currently valid for 15 years and may be renewed indefinitely if they are still in use.
Unregistered trademark rights arise through use in the marketplace in association with goods and services and the rights exist where the trademark has gained a reputation. The unregistered trademark may be asserted against others who are trying to pass off their goods or services as the goods or services of the trademark owner.
In our hypothetical case, if Mr. Brainstorm starts selling his Mega Washer 3000 in Toronto but does not apply for a trademark registration, he may over time develop rights in his ‘Mega Washer 3000’ trademark in Toronto, but it would be difficult for him to acquire rights much beyond that area. Thus, if someone started selling a hair care product with the same or a confusingly similar trademark in Vancouver, unless Mr. Brainstorm can show that his Mega Washer 3000 has a reputation there, he would not be able to stop that use. By contrast, a registration for Mega Washer 3000 would give him rights across Canada and would allow him to stop confusing use anywhere in Canada.
What is copyright?
In Canada, copyright is a creature of statute and provides the owner of an original work with a bundle of rights, including the exclusive right to produce or reproduce the work, or a substantial part thereof. Copyright can subsist in original literary, dramatic, musical and artistic works. The threshold for what is “original” is relatively low. In addition to these types of works, the Copyright Act provides certain protection to sound recordings, performances, and broadcasts.
Copyright automatically subsists in a work and does not need to be registered, like a patent. In other words, as soon as an original work is created it is covered by copyright. Registration does, however, provide a presumption of validity of the copyright and may help in establishing when the work was created.
Unlike patents and trademarks, where knowledge of the patent or trademarks rights is not necessary for a finding of infringement, copyright infringement requires actual copying. Two people can independently create identical or near identical original works without one infringing the other’s copyright.
Term of copyright
Copyright in a work lasts for the life of the author, or the last living author in the case of a work of joint authorship, plus another fifty years. After that, the work falls into the public domain and may be used by anyone. Therefore, assuming copyright subsists in his brochure, if Mr. Brainstorm were to die this year, his promotional brochure would be protected by copyright until the end of 2065.
Using Mr. Brainstorm’s shampoo and nozzle as an example, the shape of his product (i.e. the bent bottle and the nozzle) may be copyright eligible, however, as soon as he makes his fifty-first bottle, it would not be an infringement of copyright in that design for someone else to reproduce. That may not be a big concern to Mr. Brainstorm if he has a patent that covers his product, or if he has trademark rights in the shape of the bottle. But what if he does not? This is where industrial designs comes in. Industrial designs concern original aesthetic features in a finished article, for example the article’s shape.
Like patents, industrial designs must be registered to be enforceable. Registration is for ten years and gives the owner the exclusive right in Canada to use the design. Therefore, Mr. Brainstorm could consider seeking an industrial design registration for the shape of his product.
The following are additional considerations that ought to be canvassed when assessing your client’s IP rights.
In the early development stages, inventors often pitch their ideas to potential investors to get funding for their product. It is advisable to have non-disclosure agreements in place to confirm the confidential nature of the disclosure and ownership of the IP.
In our example, Mr. Brainstorm’s ownership claim to IP is pretty straightforward. However, you may encounter situations where ownership is more complicated. It will be important to unpack the ownership of the IP to ensure that your client is the rightful owner.
Claims against your client
In addition to securing rights, you should be mindful of whether your client is infringing the rights of others. You should ask your client whether they are aware of third party IP rights in the field, and whether there are any outstanding claims or proposed claims against your client. Even where there are no known potential issues, your client should also consider having its freedom to operate in its desired marketplace evaluated. As with a prior art search, the scope of a freedom to operate opinion will depend on your client’s needs and budget.
It should now be apparent that there are many considerations when advising your client on protecting IP. We have tried to describe the main challenges and to highlight some pitfalls to avoid through due diligence. However, there is no “one size fits all” protection and it will be your challenge to craft a solution that best suits your client’s needs or you could call in an IP lawyer.