Intellectual Property Legal Services
Propulsio 360 understands that intellectual property (IP) is one of the most valuable assets of businesses in this knowledge-based economy.
Our IP lawyers and partners help clients protect and defend their IP rights, including patents, copyrights, trademarks and industrial designs. We understand that businesses need comprehensive legal advice to fully realize the potential of their intellectual properties and to protect themselves from the risks of infringement.
Our team of specialists is responsible for registering copyrights, conducting title searches, and negotiating and drafting copyright marketing agreements. It also develops long-term protection plans tailored to each client’s needs, taking into account the most likely sources of infringement. To protect your IP assets, book a free consultation with our team.
The protection of IP is primarily a federal responsibility and is largely comprised of four federal statutes: Patent Act, Trade-marks Act, Copyright Act, and Industrial Design Act.
Copyright arises automatically upon the creation of an “original work”. An “original work” is work that has not been copied. It is also otherwise produced through the exercise of nonmechanical skill and judgment. Copyright exists, at law, in every original literary, musical, dramatic, and artistic work, if:
The author was, at the date of the creation of the work, a Canadian citizen or resident, a citizen or subject of a foreign country that has adhered to the Berne Convention or any other universal copyright convention, Rome convention or a country that is a WTO member; or
For published work, the work was first published in a Berne Convention country in such a quantity as to satisfy the reasonable demands of the public having regard to the nature of the work. This means, in general, that “publication” has occurred by creation of copies available to the public.
As previously mentioned, there are both registered and unregistered trademarks. Where an unregistered trademark is based on use, possession and goodwill, common law will protect it under the “passing-off” doctrine. Unfortunately, the scope of protection for an unregistered trademark is generally restricted to the geographical limitations of the territory where it has established goodwill or reputation. Registration, on the other hand, confers the exclusive right to use said trademark across Canada for commercial purposes (goods and services specified in the registration).
The trademark registration process is characterized by many procedural and substantive requirements. For this reason, it is advisable to conduct a trademark search before applying. This will ensure that the trademark is registrable and that there are no prima facie rights competing with the ones of the applicant.
Canada differs from other jurisdictions. Indeed, it does not offer protection for unregistered designs. Rather, Canadian IP protection rights may apply, such as copyright and/or passing off. CIPO assists the registrant by providing a legal claim to ownership as well as the right to prevent others from making, importing, selling or renting articles incorporating the registered design or a substantially similar design.
Recent changes to the Industrial Design Act (November 5th, 2018) have made it easier to register such rights.
Under the Patent Act (Canada), an inventor or an assignee of the inventor may apply for a patent. It should be noted that it is the first person to file an application, and not necessarily the first person to invent, who would be granted a patent, under a few conditions.
Patents, in Canada, can be obtained for new inventions, processes, machines, methods of manufacturing or composition. Patent registration is also possible for any new and useful improvement to the aforementioned elements applicable to a specific industry. The key is that there must be at least one new and innovative element to the invention or improvement. That being said, Canadian patents cannot be issued to protect a scientific principle or theorem in the abstract without a practical application.
Business methods are patentable in Canada. However, controversial examination policies have been put in place by CIPO and have been found to create obstacles to patenting business methods and computer-implemented inventions. Patent applications should therefore be specifically drafted in accordance with Canadian examination policies in mind, to maximize the chances that the patent will be granted. Indeed, claim format and content can make a significant difference between acceptance and rejection for some technologies.
It is noteworthy to mention that Canada has no continuation practice, unlike the United States. This means that, contrary to U.S. law, an applicant may not pursue additional claims to an invention which was previously disclosed in an earlier application and which has not yet been issued or abandoned. Also, the scope for filing divisional applications is limited by the particular and distinct double patenting doctrine. Therefore, strategic decisions and appropriate planning should be made with regards to Canadian patent law specifically, and not as a whole with other jurisdictions, as it can be quite different than in other countries.