Intellectual property and business law

Question 1

patent

Answer 1

Document issued by a government which grants a right of exclusion to an inventor for a given period, in exchange for a complete description of the invention

A patent does not give the right to use an invention

Question 1

What are examples of a patent

Answer 1

A product → new compound
A composition → chemical composition comprising the new compound
A machine → machine for making the new compound
A process → method for making the new compound
An improvement on any of these

Question 2

What are criteria for a patent

Answer 2

newness, non-obvious, patent subject matter, useful

Question 3

industrial Design

Answer 3

Visual features of shape, configuration, pattern or any combination

• protect how something looks but not how it functions
• protect = stops commercialization

Question 4

copyright

Answer 4

Exclusive legal right to produce, reproduce, publish or perform an original work

• provides protection for literary, artistic, dramatic or musical works and other subject-matter known as performar’s performances, sound recordings, and communication signals
• more creative

Question 5

Trademark

Answer 5

• Can be a sign or combination of signs (e.g.,words, sound or designs) used to distinguish the goods or services of one person or organization from those of others
• Main use = inform consumers of the source of certain goods or services
• Tries to prevent what is known as confusion in the marketplace → avoid confusion of source

Question 6

What are limitations of trademarks?

Answer 6

Limited to certain goods/services (can be used in different area of business).

e.g. someone can open a nuclear reactor seller named second cup and it would likely be ok because it is unlikely an average buyer would surprise themselves (and if you are purchasing nuclear reactor you are likely not an average purchaser)

Question 7

What is covered by trademarks?

Answer 7

hologram, moving image, scent, traste, texture, colour, sounds, positioning of sign, Canada has few of many of these

Question 8

Trade secrets

Answer 8

Trade secrets include any valuable business information that derives its value from secrecy

Question 9

What are requirements to protect and benefit trade secrets?

Answer 9

• Obtain value from secret
• Keep info a secret
• Take all possible measures to ensure the business info is secret

Question 10

What is identifiable intellectual property?

Answer 10

• technology
• brand name/logo
• Any works you are currently using (logo, slogal, website, text, pictures, pamphlets, computer programs_

Question 11

Why is it important to protect IP?

Answer 11

1. Adds value to business and Product/service
2. Can obtain licensing agreement from competitors
3. Prevent competitors from commercializing your technology/product

Question 12

What is inventor and author in IP?

Answer 12

Inventor = person who created the invention
Author = person/people who helped write the copyright

Question 13

What are the rules regarding ownership and assignment of copyrights created by employees?

Answer 13

• Owner is presumed to be the employer if work was made in the course of employment, unless there is an agreement stating the contrary
• Examples of the employer being the owner:
  Computer code drafted by an employee programmer
  Logo created by an employee
  Pertain to works

Question 14

What are the rules regarding ownership and assignment of Patents created by employees?

Answer 14

• Owner is presumed to be the employee unless:
  There is a contract expressly stating otherwise; or
  The employee was specifically hired to invent or innovate
• Pertain to inventions
• Examples of employer being the owner:
  New car braking system created by employee whose contract states that employer is the owner
  Chemical compound created by an employee researcher specifically hired to create said compound (e.g. pain releaving med)

Question 15

What are the rules regarding ownership and assignment of IP created by independent contractors?

Answer 15

For both patents and copyrights, the owner is presumed to be the inventor/author, or the company under which they are employed, unless agreed otherwise

Question 16

What are factors that come into deciding if you should file IP rights or not?

Answer 16

Cost of filing/registering/maintaining a patent/trademark/industrial design vs the value gained

Question 17

Factors related to registered trademarks vs unregistered trademarks

Answer 17

Unregistered trademarks do provide some protection, but it is limited
E.g. unregistered trademarks require proof of goodwill, and enforceability is limited to the geographic area in which said goodwill has been proven

Question 18

File patents or trade secrets?

Answer 18

Patents:
- Lasts 20 years from filing date
- Can be difficult and/or expensive to obtain/maintain
- If you file for a patent and then it gets denied, you can’t claim that it is a trade secret because people would have seen the application so it is no longer a secret

Trade secrets:
- Can last indefinitely (until secret is revealed)
Information must be kept secret (which can be difficult/costly)

Question 19

What is assignment clause of IP?

Answer 19

• Specifically mention who owns IP created by employee or third party. Must be signed and in righting
• Waiver of moral rights → rights that the author has in their work that will always remain with them and cannot be transferred to someone else. Can waive their rights against certain people, “employee hereby waives any moral rights”
• right to remain anonymous
• right of integrity (work cannot be defaced or destroyed
• ## Right of association (prevent their work from being associated with environemnted deemed inappropriate by their valued)

Question 20

What is duty of loyalty/confidentiality?

Answer 20

obligation of loyalty and confidentiality of the employee

Can be specified in contract but also under CCQ: bound to do work with prudence, diligence, faithfully, honestly and not use any confidential info

Lasts a reasonable time after the contract terminated (normally few months) and permanently when the information concerns the reputation and privacy of others

Question 21

What actions must the employee take to comply with CCQ on loyalty and confidentiality?

Answer 21

• Respect the confidentiality of certain information belonging to the employer;
• Not appropriate the material or intellectual property for the employer;

Question 22

What are the rules of CCQ regarding relationships with third parties and confidentiality?

Answer 22

CCQ doesnt apply

• Contractual clauses (trade secrets) - If providing someone with confidential info, have them sign an agreement stating they cannot use or disclose the confidential information! (NDA)
  MUST HAVE:
• Definition of confidential information → definition that says what the confidential information actually is, keeping it both broad and narrow
• Obligation of non-disclosure and non-use → states that the employee or third party has an obligation not to use nor disclose information received unless the right to do so was provided in the agreement
• Definition of “permitted uses” → cases in which they can use or disclose the information in question. - Needed as you are disclosing info for a specific information so you must state they can only use it for this.

SOMETIMES:
- Undertaking not to use/disclose confidential information of third parties (e.g. former employer) → if you hire an employee or third, you should make it clear what their duties are in relation to your company as well as past customers information
-Date destruction/return of documents → return or destroy all confidential info when contract is over
-Obligation to report if information was inadvertently transmitted → tells the employee or independent contractor that they need to do something if they accidentally give information
-Penal clause (articles 1622 and 1623 of the Civil Code)

Question 23

What are remedies for infringement of intellectual property?

Answer 23

Injunction → court orders you to start or stop doing something
Damages → pay owner for profits they may have lost bc of infringement
Accounting of profits → pay profits you made bc of infringement
Punitive damages → above and beyond other damages, usually reserved for infringements are heinous (e.g. did it a lot, and received multiple notices, but didn’t stop)
delivery/seizure and destruction of property → court forces you to destroy anything infriging or send it to someone.

Question 24

What services should be considered for IP?

Answer 24

• Professional to perform a freedom to operate search who looks through databases to see if there are existing patents
• trademark search and opinion, avoid trademark infringement bc you hire someone to search for trademarks you might infringe on

Question 25

What is the obligation to 3rd parties (obligation towards employer)

Answer 25

Important because if said former employer or client gets it in their head that their former employee/independent contractor they could sue that person as well as your company for inducing them to break their agreement 3

Question 26

What should francization programs take into account?

Answer 26

Francization programs should take into account:
- Employees near retirement or with long records of service
- The particular case of head offices and research centers of enterprises from outside Quebec
- Enterprises that produce language content
- The line of business of the enterprise
- If you are producing a German show, it would make sense that most of your interactions are in German