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UBC Law 422.002 INTELLECTUAL PROPERTY Copyright – Jennifer A. Marles Patents – Thomas W. Bailey Trademarks – Craig A. Ash Oyen Wiggs Green & Mutala LLP.

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Presentation on theme: "UBC Law 422.002 INTELLECTUAL PROPERTY Copyright – Jennifer A. Marles Patents – Thomas W. Bailey Trademarks – Craig A. Ash Oyen Wiggs Green & Mutala LLP."— Presentation transcript:


2 UBC Law 422.002 INTELLECTUAL PROPERTY Copyright – Jennifer A. Marles Patents – Thomas W. Bailey Trademarks – Craig A. Ash Oyen Wiggs Green & Mutala LLP 604-669-3432


4 Contact Information e-mail:  Include “Law 422” in subject line  Follow up if no response in 24 hours telephone: 604-676-8967  No set office hours  Afternoon (2:00-4:00) is best time

5 Course Materials Handouts:  PowerPoint Slides for Lectures  Casebook  Comparative IP Table  Statutory Sections for Copyright, at least: 2 through 32.3 34 through 42 46 through 53 56 through 58 64 through 64.2 79 through 91

6 Reference Texts - Copyright D. Vaver, Intellectual Property Law (Irwin: 1997) D. Vaver, Copyright Law (Irwin: 2000) Gervais & Judge, Intellectual Property: The Law in Canada (Carswell: 2005) Canada - Fox on Copyright  Copyright Act Annotated - Leger Robic  Hughes on Copyright  Tamaro U.S. - Nimmer U.K. - Laddie, Prescott & Vitoria  Copinger & Skone James

7 Journals and Reports Reports  Canadian Patent Reporter (C.P.R.)  United States Patent Quarterly (U.S.P.Q.)  Reports of Patent Cases (R.P.C.)  Fleet Street Reports Journals  Intellectual Property Journal (I.P.J.)  Canadian Intellectual Property Review (C.I.P.R)  European Intellectual Property Review (E.I.P.R)

8 Course Outline Lecture Timing  2:00 to 3:15 - break – 3:30 to 4:30  Introductory lecture today  Copyright: Jan. 12-Feb. 2  Patents: Feb. 9-Mar. 8 (no class Feb. 23)  Trademarks: Mar. 15-Apr. 5

9 Course Outline Exam: April 20 at 9:00 a.m.  Open book exam  3 separate sections on patent, trademark and copyright law  3 hours plus 20 minutes reading time  essays and short answers  option to write a paper which will account for 40% of final grade (if paper grade exceeds exam grade)  Submit outline for prior approval

10 Copyright Lectures Today: Overview of different types of IP Jan. 12: Authorship, originality, fixation Jan. 19: Works, rights, ownership and assignment Jan. 26: Infringement Feb. 2: Fair dealing, review


12 CategorySubject MatterLegislationTermExample PatentDevice, process, composition of matter Patent Act20 yearsMachine, chemical composition, process CopyrightFixed expression of ideaCopyright ActGenerally author’s life + 50 years Software, music, books, works of art, architectural works TrademarkIdentifiable symbolTrade-marks Act15 years (renewable)Words, logos, etc. Industrial DesignAesthetic design of useful product Industrial Design Act10 yearsFurniture, golf balls, appliances, shoes Trade Secrets & Confidential Information Confidential subject matter of value No civil legislation Criminal: Security of Information Act Indefinite, so long as confidential Recipes, business information Plant Breeders’ RightsVariety of PlantPlant Breeders’ Rights Act 18 yearsStrain of blueberries, roses Integrated Circuit Topography 3D design in semi- conductors Integrated Circuit Topography Act 10 yearsCustom chips

13 Overview Why is intellectual property law booming? – Rapid development of computer, Internet and wireless communication technologies – Rapid development of biotechnology and health care devices and drugs – Increased willingness of the courts to expand and enforce intellectual property rights – Increased international commerce and product merchandising

14 Overview Competing Interests – rights of creators versus rights of users – freedom of information versus right to prevent misappropriation of property or invasion of privacy – freedom to operate versus right to prevent unfair competition


16 Trademark Basics Trademarks identify the source of goods or services Trademarks distinguish one trader’s goods or services from those of others Trademarks signify that goods or services sold in conjunction the mark have a certain level of quality

17 Types of Trademarks Words Designs Composite Marks Letters Slogans Characters Non-traditional marks, such as sounds and colours


19 Designs

20 Composite Marks

21 Letters

22 Numbers 967-1111 649


24 Characters

25 Non-traditional Marks Musical Notes Design CA Registration No. 359,318 Capital Records Inc. US Registration 916,522 US Registration 1,439,132 227 USPQ 417 (Fed. Cir., 1985)

26 Non-traditional Marks

27 Distinguishing Guise CA Registration No. 730,159

28 Nature of Exclusive Rights Enforceable trademark rights may arise automatically upon use of a trademark Registration of trademarks is desirable but is not mandatory for rights to arise Trademark rights may potentially extend indefinitely, so long as use continues

29 Registrability Not all trademarks are registrable For example, trademarks which are descriptive of the goods or services in question, or are confusing with other registered trademarks, will be denied registration In Canada, registrations extend for a term of 15 years and are renewable

30 Trademark Searches Need to ensure trademark is available for use and registration Prior unregistered user would be entitled to registration over a later-filed application So conduct 'clearance searches' before adopting a new trademark or filing an application

31 International Protection Separate trademark registrations must be obtained in each jurisdiction of interest Community Trademark Applications Madrid System – Canada is not a party


33 Patent Basics Patents can protect implementation of ideas, not just the expression of ideas Not all ideas fall within patentable subject matter Patents do not protect scientific principles or abstract theorems


35 Transgenic Non-Human Mammals US Patent No. 4,736,866

36 N CH3CH3 N O2SO2S CH 3 CH 2 O N HNHN O CH 2 CH 2 CH 3 N N CH3CH3 HOO C OHOH CO 2 H VIAGRA ® Sildenafil Citrate


38 Tourist Map T-Shirt US Patent No. 5,121,505

39 What is a Patent? A form of monopoly for a limited period of time intended to encourage disclosure of useful inventions A type of social contract between the inventor and the state An incentive to innovation

40 Patent Applications Patent rights do not arise automatically upon conception of an invention  No patent by “registered mail” Must obtain approval from a government patent examiner in order to obtain enforceable rights Patent application process is costly and time consuming

41 Patent Applications Patent application process involves:  filing  search  examination  response or amendment  notice of allowance or final rejection  payment of issue fee or appeal

42 International Protection Separate patents must be obtained in each jurisdiction of interest “Worldwide patents” do not exist Difference between patentability and infringement European Patent Convention Patent Cooperation Treaty

43 Term Patents subsist for a defined term After a patent expires or lapses the invention falls into the public domain and may be freely used by anyone Currently, Canadian patents extend for a term of 20 years from the application filing date Formerly, patents extended for 17 years from the issue date

44 Infringement Patents protect against independent creation - it is not necessary to prove access or copying The “claims” of a patent define the scope of monopoly which the patent affords

45 Cost & Complexity Patent applications are significantly more expensive to prepare and file than trademark or copyright applications Patents are also typically more expensive to enforce than other forms of intellectual property protection

46 Statistics from a survey by the American Intellectual Property Association

47 i4i v. Microsoft

48 The Great Cookie War (1984), 82 C.P.R. (2d) 224 (F.C.T.D.) (1989), 11U.S.P.Q. (2d) 1241 (Dist. Ct., Delaware) V.


50 Trade Secrets Trade secrets are protected by the common law so long as the information remains secret – “breach of confidence” Patents require disclosure of an idea - the word “patent” is derived from a Latin word which means “laid open” or “revealed” Patents will eventually expire Trade secrets potentially indefinite

51 Trade Secrets Some inventions are better maintained as trade secrets Trade secret protection may be available for new ideas which do not constitute patentable subject matter



54 Trade Secrets Trade secrets provide no protection against independent creation Protection is lost once the idea becomes available to the public If trade secret can be reverse engineered, cannot be protected as such

55 Industrial Designs Industrial designs protect visual or aesthetic features of new articles of manufacture whereas patent protection functional features Term of protection is 5 years renewable for one further 5 year term In the United States industrial designs are referred to as “design patents” and extend for a single term of 14 years D


57 Plant Breeders’ Rights protects new plant varieties that are distinct from known varieties, uniform and stable all plant species eligible for protection, but not algae, bacteria and fungi gives exclusive rights, including the right to sell, and to produce, propagating material for purposes of sale procedure of government application and examination territorial rights – apply in each country of interest

58 Plant Breeders’ Rights new variety must be given a name (“denomination”) that must be used by all those who market that variety term of protection is 18 years, subject to payment of annual maintenance fee

59 Personality Rights well-established in the U.S. newly developing tort of “misappropriation of personality” in Canada requires: 1.unauthorized use of an element of a person’s personality (voice, image, video, name etc.); 2.the use creates an identifiable link between the individual’s personality and products or services (i.e. suggests endorsement of the product by the person); and 3.commercial exploitation of the personality.


61 Copyright basics Copyright protects the expression of new ideas, not the ideas themselves Copyright arises automatically in works capable of protection Registration of copyright is optional Copyright is an incorporeal right - a “chose in action” No copyright in future works

62 Subsistence of Copyright Subject matter Originality Fixation Qualifying authorship

63 literary works musical works artistic works (photographs, sculptures, architectural works) Subject Matter

64 software (literary) dramatic works performances sound recordings communication signals

65 Originality Threshold of originality required is low - a high degree of creative skill or artistic merit is not required Work must be the product of the author’s skill and labour and must not be copied from another’s work Telephone directories, engineering drawings and maps may qualify for copyright protection

66 Fixation Copyright does not apply to transient occurrences such as sporting events or live performances, although a film, videotape or broadcast of the event would be protected Copyright must be expressed in a material form capable of identification and having a more or less permanent endurance

67 Qualifying Authorship Author must be a citizen or resident of a treaty country or there must be first publication in a treaty country Since Canada implemented the Agreement on Trade-related Aspects of Intellectual Property (TRIPS) in 1996 virtually all works are eligible for Canadian protection

68 Term of Protection Generally speaking, the term is 50 years following the end of the year in which the author dies Joint Authorship Posthumous works Photographs

69 Ownership Author of the work is ordinarily the first owner of copyright Works for hire: employee or independent contractor? Crown copyright Copyright Assignments must be in writing: Section 13(4) of the Copyright Act

70 Nature of Exclusive Rights Bundle of rights set forth in Section 3 of the Copyright Act “Sole right to produce or reproduce the work in any material form whatsoever” Also sole right to authorize other parties to perform such acts

71 Infringement Infringement occurs when a person exercises one or more of the exclusive rights of the copyright owner without their license or consent Must ordinarily prove access and substantial reproduction “Fair Dealing” is an exception to copyright protection

72 International Protection Berne Convention is a a multilateral copyright treaty having effect throughout most of the world Most foreign countries grant reciprocal protection for Canadian authors Affixation of the copyright symbol is not mandatory

73 International Aspects Berne Convention – 1886 and revisions – National treatment; minimum protections; no formalities Universal Copyright Convention – 1952 – Countries that required formalities; shorter term Rome Convention – 1964 – Protection for neighbouring rights NAFTA – 1994 TRIPS – 1996 – WTO countries – Requires compliance with Berne

74 International Aspects WIPO Treaties - 1996 – Copyright Treaty – Performances and Phonograms Treaty Aimed at protection in the digital age – Right of “making available” Canada is a signatory but has not yet implemented these obligations

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