The practice area of intellectual property lawyers comprises the provision of advice and representation in all matters relating to origination, exploitation and protection of inventions, patents, trade-marks, official marks, copyright, moral rights, industrial designs, brand names, trade dress, personality rights, topographies, trade secrets, data, etc.; product piracy, counterfeiting, grey goods, infringements, passing off, etc.; forms of agreement respecting the origination and exploitation of intellectual property including R&D joint venture agreements, exploitation agreements, royalty agreements, licensing agreements, technology transfer agreements, etc.; intellectual property asset transfers in corporate acquisitions, mergers, strategic alliances, franchising and other commercial transactions; international aspects of the origination, exploitation and protection of intellectual property.
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Intellectual property (IP) lawyers assist individuals or juridical persons in their applications under any of the laws for the registration of their patents, industrial designs, trademarks, or copyright. They also assist said clients in protecting their trade secrets through the careful drafting of employment contracts to include non-disclosure agreements, and confidentiality clauses. In addition, IP lawyers represent their clients before administrative offices in the process of registration.
When infringements occur against their clients who are the rightful owner of an intellectual property, IP lawyers determine the applicable law and action to enforce such rights against violators. As such, IP lawyers are both transactional and litigious in their practice.
Canadian intellectual property laws are a combination of different federal statutes, provincial and territorial laws, and case law or jurisprudential doctrines from decided cases governing the application process, the protection granted, and all other matters necessary for the protection of an individual’s or an organisation’s intellectual property/properties.
This is in addition to the numerous international conventions that Canada is a signatory to, and which are mostly transformed or amended into the said federal statutes. Hence, Intellectual property lawyers are knowledgeable both on domestic and international IP laws.
The Canadian Intellectual Property Office (CIPO) is a special agency under the Innovation, Science and Economic Development portfolio that caters to new or amended trademark applications, applications for patents, registrations of copyrights, and applications for industrial designs. Said specific process and details, including the fees, of the said applications and registrations may be different from each IP right.
The Office also has an IP database which users or designers may look at to check if there’s already an existing trademark, patent, copyright or industrial design registered. IP lawyers work in close coordination with this database and CIPO in representing their client’s registration or application.
The five types of Canadian intellectual property which are protected under the law are: patents, industrial designs, trademarks, copyright, and trade secrets. More details may be provided by intellectual property lawyers as to specific details of application or registration, and if there’s confusion on the similarities of these five types.
The primary statute in Canada that details the rules and regulations regarding patents of invention is the Patent Act. Under the law, a registered patent provides the exclusive right against reproducing, using, or selling another’s invention for the period of 20 years throughout Canada from the time of the filing of the application.
This is also based on a “first-to-file system” which gives preference to the first applicant of a patent. For the information of the public, said application is available to the CIPO’s website after 18 months since the application.
Notably, a foreign patent must be separately applied for when it will be used in Canada; similarly, a Canadian patent is only applicable in Canada. Consult with an intellectual property lawyer for assistance with this.
Section 2 of the Patent Act defines an invention as something that is “new” and “useful”, or is a “useful improvement” of any of the following patentable inventions:
However, in the interpretation of various case law of the same Section 2 of the Patent Act, not all inventions can be patented. Chapter 17.03 of the Manual of Patent Office Practice, provides for a list of not patentable inventions under the Act.
Designers or producers of distinct, unique-looking original or new products can register these designs or products as an industrial design under the Industrial Design Act with the CIPO. Under Section 2, it may be the features with regards to the shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article. Here, what is being registered is its visual appearance, and not its usage.
An application may be made one (1) year after the design’s creation or production. Once registered, an industrial design is protected for a period of 15 years after the filing of application applicable throughout Canada. The Act also prescribes the action against infringement for persons whose industrial design was illegally used by another.
Section 7 enumerated the qualifications for an industrial design to be registered:
The Trademarks Act is federal statute governing the regulation of trademarks and unfair competition. In Section 2, it defines “trademark” as a sign or a combination of signs to indicate a particular person’s goods or services and distinguish it from others, or a certification mark. Practically, it stands out as the person’s or company’s distinct reputation and brand. Similar to patents, trademarks are registered on a “first-to-file system”.
Generally, business names as trademarks may not necessarily be registered, as these are already under the protection of Canadian common law (or Quebec civil law). However, by registering a trademark, it becomes statutorily protected under the Trademarks Act and other CIPO regulations – the most important is the exclusive use of the trademark throughout Canada for a period of 10 years. Intellectual property lawyers frequently help clients navigate this process.
Under Sections 9, 10, 11, 12 and 16, the following are prohibited to be registered as a trademark:
A copyright is an obtained right to produce or reproduce the original work of another person or entity, in any form, and in part or a substantial part of it. The federal law governing copyrights in Canada is the Copyright Act. Under the Act, copyright may apply to any literary, dramatic, musical, or artistic works. Generally, there is a lifetime of protection that is provided for the original creator, until the 70th year following their death.
Although there is no federal statute protecting trade secrets, protections for it are found in common law (and civil law for Quebec). Provisions of Canada’s Criminal Code may be used against violators, and civil actions on breach of contracts or confidence and torts, where most of the protection for trade secrets are based on contracts with non-disclosure agreements and confidentiality clauses.
Do you have any intellectual property that you would like to register? Below is a list of the best intellectual property lawyers in Canada.