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A Guide to Protecting Intellectual Property

(version 2.1 - as of 22D10M16Y)

This Guide to Protecting Intellectual Property has been prepared for the Canadian University Intellectual Property Group (CUIPG) to provide the Canadian university community with information on matters pertaining to intellectual property.

The Canadian University Intellectual Property Group comprises the Directors of Intellectual Property/Industrial Licensing offices at the following Canadian universities: British Columbia, Alberta, Waterloo, Western Ontario, McMaster, Toronto, Queen's, Montreal, McGill and Laval.

This guide may be copied and distributed by any Canadian university.

What is intellectual property?

Intellectual property, simply defined, is a legally protected interest in a form of knowledge or expression created with one's intellect. It includes such things as inventions, computer software, trade-marks, literahigherry, artistic, musical or visual works, and even "know-how."
Inventions may be protected by patent or industrial design registration. Software, literary, artistic and musical works may be protected by copyright.

The initial ownership of intellectual property, in most cases, resides with the creator of that intellectual property, but in many cases rights are assigned to the creator's employer (such as a university for faculty members). Policies with respect to patentable intellectual property vary at different institutions and all readers are encouraged to review the policy of their respective institutions relating to ownership, obligation to disclose, sharing proceeds from commercialization and conflicts of interest. Traditionally, universities in North America have allowed their faculty members to retain their copyright in literary, artistic and musical works.

>>View Western University's policies regarding IP ownership

Most inventions and software created at Canadian universities are based on research primarily sponsored by some form of government funding. There is, therefore, at least an aspiration if not a contractual obligation on those who own that intellectual property to make efforts to ensure that it is utilized for the benefit of the public at large. That, in most cases, requires protection and commercialization through, if possible, a Canadian-based firm. Intellectual Property Management offices, such as WORLDiscoveries have been established at most research-intensive universities to provide advice and services to the university community in order to facilitate the protection and commercialization of intellectual property.

Patents

What is a patent?

A Patent may be granted by a national government, upon application, and in exchange for a complete disclosure of an invention. A patent grants to the patent holder the right to exclude others from making, using or selling the claimed invention for a limited period of time. The disclosure is initially a confidential disclosure to the patent office, which later becomes a non-confidential disclosure to the public at large.

In Canada, for example, patent protection lasts for a term of 20 years from the date of application, for applications filed since 1 October 1989. In the United States, the term is also 20 years from the date of the first filed U.S. application. The term of protection begins to toll as soon as the application is filed, but the value of the rights do not begin until the patent is granted. This results in a period of usable rights which is less than 20 years, however, for U.S. applications filed since 29 May 2000, the term may be extended based on any delays in issuance of the patent caused by the U.S. Patent and Trade-mark Office.

>>For further discussion on the usable term of patent rights see our IP Protection 101 article "A patent's not a patent until it issues."

What is patentable?

By law, in order to be patentable, an invention must be novel, it must not be obvious to a person skilled in the field of the invention, and it must have utility.

Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these (such as new uses of known compounds), are patentable subject matter.

Novel genetically engineered lower life-forms and new microbial life-forms can be patented in some jurisdictions, such as the United States and Canada, but not in others. Novel genetically engineered higher life-forms are patentable subject matter in some jurisdictions including the U.S.

Medical devices are patentable in most jurisdictions, while methods of medical treatment are only patentable in some jurisdictions, such as the United States, but not Canada, Europe or China for example. Scientific theorems or principles are not patentable subject matter in Canada.

Software is explicitly protected through copyright in Canada, but provided that the software suffices to meet the usual criteria for patentability, it can also be patented in some jurisdictions, including Canada.

>>For more information on patenting software see out IP Protection 101 article "Patenting software is no cakewalk."

New plant varieties can be protected under the Plant Breeders' Rights Act in Canada or by a Plant Patent in the United States. Some other jurisdictions, but not all, have equivalent legislation.

Integrated Circuit Designs can be protected in the United States under the Maskworks Protection Act. Canada has the Integrated Circuit Topography Act. Other countries are considering similar legislation.

How do foreign patents work?

Patents do not cross national boundaries and, at present, there is no such thing as an International Patent. Harmonization of the world's patent laws is progressing rapidly, but in general each country grants its own patents based on its own standards.

Under the Paris Convention of 1887, the date of the first filed application for a specific invention becomes the effective filing date for all subsequent applications for the same invention filed in member states as long as it is filed within one year of the filing date in the first member state. Almost all industrialized countries are signatories to the Paris Convention.

In Europe it is possible at the European Patent Office to file a single regional application (in English, French or German) to protect one's rights in up to 27 European countries. A single regional patent is granted but is not effective until it is ratified in each National Patent Office selected by the applicant by paying the appropriate national fees, translating into the local language, and meeting local requirements as to form of claims, etc. A similar process is also available in two geographic regions within Africa.

In our global economy, it is usually advisable to initiate steps to protect foreign patent rights before commercialization is contemplated or completed. The Patent Cooperation Treaty, to which Canada acceded in 1989, offers an alternative mechanism of initiating steps to protect foreign patent rights by deferring some of the major expenses (e.g., foreign translation costs) for up to 30 months from the initial patent filing.

>>For more information on Foreign Patents see our IP Protection 101 article "Where are we going to patent?"

>>View Western University's policies regarding patents
 

Publication

As mentioned above, one of the criteria for patentability of an invention is that the invention must be novel. Novelty means that the invention must be new in the eyes of the public. As such, there cannot have been any disclosure of the invention by the inventor, or by others, to the public. Most developed countries follow a policy of absolute novelty, i.e., no patent can be obtained if the invention has been publicly disclosed in any manner, anywhere in the world. This is very important when considering the effect of publication in a scientific or other journal on a foreign patent application.

>>for more information on publication see our IP Protection 101 articles "Publishing and patenting" and "The first rule of inventor fight club."

Grace period

Canada and the U.S.A., however, provide a grace period of one year from the first public disclosure of the invention, during which the inventor can file a patent application, provided that the disclosure was made by the inventor or someone who obtained the information from the inventor. Few other countries are as generous to inventors and it is advisable, therefore, not to disclose the invention to anyone until a patent application has been filed. Disclosure can, however, be made on a confidential basis and such disclosure will not affect the ability to patent in absolute novelty jurisdictions.

What is public disclosure, and how is it determined?

Any printed publication in a newspaper, scientific journal or other written form available on an unrestricted basis is a public disclosure, as is an oral presentation at a public meeting. Published pre-prints or abstracts of (a) papers for a scientific meeting or (b) degree theses are also considered public disclosures. Other forms of public disclosure include conference proceedings and seminars; scientific conferences, poster sessions, industry meetings and offers to sell.
It is the relationship between the parties that determines whether the disclosure is public or made in confidence. The disclosure is legally confidential if, when receiving the information, the receiving party personally understands and accepts a duty to keep the information confidential. A disclosure to an academic colleague may or may not be considered confidential depending on the understanding between the parties. (See also grant applications, below.)
NOTE: offering your invention for sale will destroy novelty in the U.S. and might be detrimental in Canada as well. This holds true even if the offer for sale is made under a confidentiality agreement.

What is the effect of public disclosure?

A written or oral public disclosure can be used as a prior art reference by a patent office examiner evaluating a patent application if enough of the invention is disclosed to enable a person skilled in the relevant field to put the invention into practice. This would prevent the patent office from issuing the patent. Such disclosure can also be used by a court to invalidate an issued patent. In some countries, experimental use of the invention in public will count against patentability.

Grant applications

It is advisable to disclose an invention to WORLDiscoveries before the details of the invention are included in any grant application. Disclosure to WORLDiscoveries is confidential. Although disclosure in a grant application does not represent public disclosure, at least in Canada, reviewers will be exposed to the invention and represent an unnecessary threat to patentability. In the United States, grant applications may be considered public documents under Federal Freedom of Information legislation.

Copyright

Copyright is a collection of exclusive rights conferred on the copyright holder, including primarily the right to reproduce a work. Copyright subsists as soon as an artistic, literary or musical work or software is created, and registration at the Copyright Office is purely voluntary. It is however, advisable to put the public on notice that the creator is claiming copyright by marking all copies of the work with a copyright notice.

Registration of a copyright facilitates the copyright holder's rights in the event of a legal dispute.

Copyright protection in Canada lasts for the life of the creator plus fifty (50) years. Copyright extends to other countries by virtue of treaties such as the Berne Convention and Universal Copyright Convention but the term of protection in other countries depends on that country's respective law.

>>Learn more about Western's policies regarding Copyright

Trademark

Trademark is the exclusive right of the maker to attach a distinctive "mark" to their product or service to indicate its source. Registration of trademarks in Canada and the U.S. is voluntary, but a mark which is registered will trump one which is not. The mark must be distinctive to ensure that a consumer who is faced with multiple marks will not "likely be confused" as to which product or service came from which maker. The distinctiveness can be inherent to that particular mark, such as a made-up word or a symbol that is not used in another context, or it can come from creating and maintaining a "secondary meaning" of that mark in the minds of the public, like the word Apple. The mark itself might be any distinctive communication of the source, including, but not limited to:  words, phrases, logos and sounds. For more examples of possible "marks" or advice on registering or maintaining your trademarks you should contact WORLDiscoveries.
   

Know-how and trade secrets

A researcher's know-how can often have considerable value. A researcher will often possess valuable confidential know-how and experience to permit commercial optimization of a process or product. Know-how or trade secrets can in fact be licensed independently and a know-how license need not be restricted to the term of any patent.

Confidential information and know-how should, therefore, be clearly defined and disclosures should be covered by a written contract.

Confidentiality agreements and biological material transfer agreements

An invention may be disclosed prior to filing a patent application, provided it is covered by a Confidentiality Agreement between the inventor and the party to whom the invention is disclosed. Such agreements provide evidence of the receiving party's understanding of the confidential nature of the information and express in written form the receiving party's obligation to keep the information in confidence. These are simple agreements and WORLDiscoveries can assist you.

Any breach of a confidentiality agreement can be brought to a civil court for monetary remedies as a contracts proceeding. However, such a breach may result in the disclosed information becoming available to a patent examiner and used to defeat novelty or obviousness, thereby rendering the invention unpatentable. Therefore, while confidentiality agreements themselves are not grounds for patent rejection, a breach of those agreements might be, and this risk should be considered when entering into new agreements.

Biological materials can be used to develop modified or derivative products from the original materials. It is important to control the use of transferred biological materials, and standard material transfer agreements are now being used by most institutions in North America. Please consult WORLDiscoveries before you transfer any biological material to any academic or industrial collaborator/researcher.

>>Learn more about Western's policy on Material Transfer Agreements in the IP chapter of the Faculty Collective Agreement, Section II: Patents, clause 24

Invention disclosure (confidential)

When should I disclose?

Most countries, including Canada and the US, operate under a "first-to-file" patent system. That is, when two or more applications for patent for the same invention are pending, the patent will be granted to the first applicant to file a patent application.

The United States was the last country to operate a "first-to-invent" system, i.e., the patent was granted to the person able to prove the earliest date of invention, regardless of the date of filing of the patent application. This complex system often interfered with date-of-invention policies in international treaties such as the North American Free Trade Agreement (NAFTA) and the General Agreement on Tariffs and Trade (GATT).  As of 2013, with the enactment of the "America Invents Act", the first-to-invent system was formally replaced with the "first-to-file" system.

In the past, discussions with WORLDiscoveries may have been intended to establish an invention date. That is no longer the case with no remaining countries operating "first-to-invent", but disclosure to WORLDiscoveries should still occur as early as possible to provide as much time as is available to consider all IP protection options. Any disclosure should certainly happen before any publication, including abstracts.  

How do I make an invention disclosure?

Your first step should be to contact WORLDiscoveries to indicate that you believe an invention has been made. Please view our process here. You will be asked to complete an "Invention Disclosure" or "Report of Innovation" form, which can be found in the "resources" tab of the link above.   

Inventorship

An inventor is a person who has had an original idea or otherwise contributed intellectual input to one of the claims of a patent. A patent application may be filed naming one or more inventors. A person who works under the direction of another and does not contribute any original thought to the claimed invention, i.e., "works as a technician" to confirm an invention, must not be named as an inventor. Professional collaborators may or may not contribute to the inventive concept being claimed and great care should be taken in deciding who should be named as an inventor. It is important to understand that inventorship is a legal matter, not a collegial matter -- not all co-authors of a publication need be co-inventors. Collaborators not deemed to be co-inventors can, however, be recognized through some sharing of the net proceeds from the invention. If you are in doubt as to inventorship, please contact WORLDiscoveries for a professional opinion

>>For more information on inventor ship see our IP Protection 101 article "Who's the crew on inventorship?".
 

An extensive literature search should, of course, be done before any research project is undertaken. Once an invention has been made, you should update your literature search and, if possible, supplement it with a review of the patent literature. All available literature of relevance should be drawn to the attention of WORLDiscoveries. Please see our process for more information on how we might be able to help with additional searches.

Commercialization Process

For information on WORLDiscoveries' part in the commercialization process of an invention, please refer to our process here. Please pay special attention to the "Assignment and Sharing" piece of the "Protection" section, as well as the "Marketing," "Agreements," and "Compliance" sections for information on our role in the commercialization process.

 

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