Lecture 6

• Patent • Trademarks • Copyrights • Industrial Design • Confidential Information, Trade Secret and Know-how • Plant Breeder’s rights • Integrated Circuit Topography

confidential information, trade secret and know how

-An exclusive right given to an inventor (or its legal representative) for a period of time in return for a complete disclosure of the invention, provided other requirements form the Patent Act and Patent Rules are satisfied

– Novelty: like has it ever been disclosed if so then it can’t be patened anymore – Utility – Inventiveness (non-obviousness)

Any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, that is novel, inventive (non-obvious) and useful

no

no

no

no

• Any person that contribute in an inventive manner to the invention (intellectual contribution and initiative) • technician vs. inventor • Employees represent the base of any company (Know How / trade secret)

• For a technology that has a commercial potential • To protect assets of a company • To transfer the technology • To find commercial partner, create joint venture

• Before any disclosure, sale, signing a non-disclosure agreement and even sending a manuscript for publication • As soon as you have preliminary data

• Canada, Europe, Japan, internationally *First-to-file system • United States *First-inventor-to-file system since March 16, 2013… and before *First-to-invent system

• Canada, Europe, PCT and United States : – Patent applications are laid-open to public inspection 18 months after the earliest priority date or filing date • Exceptions: – US Patent applications filed before Nov. 29, 2000; and – Canadian patent applications filed before October 1st, 1989; These applications remain confidential until the grant of the patent

• Protection only starts at the grant of the patent and ends 20 years after the filing date of the application • Caution: US patent may be subjected to a Patent term adjustment causing an extension of the 20-year term (see US9339277)

• Patentability Search • Filing of a first application in the United States • Filing of an international (PCT) application claiming priority of the first filed US application within 12 months of the first filed application (allows to differ costs for translation among other advantages)

• To confirm or verify patentability of the invention • To prevent duplication of invention • To better describe the state of the art • To identify new products / solutions • To generate new ideas for research • To avoid infringement

• Use, purchase, making, sale and importation of a patented invention in Canada, without the Patentee’s authorization • Generally to guard against infringing someone else’s rights, a Freedomto-operate search and opinion should preferably be conducted before any commercialization

• A patent is granted with a presumption of validity, until otherwise proven

• Takes care of protecting inventions • Has a technical background • Is highly qualified (exams to pass) • No school or class but only other patent agents to learn from

• Drafting applications • Prosecuting applications • Advising client on strategy for protecting inventions • Providing patentability, infringement, validity and freedom-to-operate opinions • Worldwide practice • Diversified area of practice