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Transcript of IImagine IInvent IInvest IIntroduce Bridging the gap between knowledge and market.
Business Software and IP Protecting software
Patents
Copyright
Secrets
Other Barb EcclesManager, Technology Transferinnovations.lakeheadu.ca
CAUTION: This information is to be considered solely as a
guide and should not be quoted as or considered to be legal authority. It may become obsolete in whole or in part at any time without notice.
This seminar is not to be construed as legal advice.
Intellectual Property is …
… personal property that is concerned with ideas or inventions of which individuality or originality is an essential feature. Includes:
the expression of ideas a product of intellect IP may exist in many forms
Some types of Intellectual Property
Artistic works Literary works Inventions Discoveries Processes Knowledge Datasets Data bases Audio visual
material Circuitry
Biotechnology Genetic engineering
products Plant cultivars Germ plasma Computer software Circuit board
schematics Any other item,
knowledge, thought, or product of research
Intellectual Propertycan be protected by: patent copyright trademark industrial design integrated circuit topography plant breeders rights trade secret For more information, see:
Canadian Intellectual Property Office (http://cipo.gc.ca/) US Patent and Trademark Office www.uspto.gov
Types of Intellectual Property Protection
Type Covers Rights Terms Examples
Patent Device, process, composition of matter
Inventor 20 years
Copyright Material form of composition
Author, creator Author’s life + 50 years
Books, software, music
Trademark Identifiable mark 15 years (renewable)
Logo, slogan
Plant Breeder Rights
Variety of plant Breeder 18 years Quantum Canola
Industrial Design
Aesthetic design of product
Designer 10 years Rug, cutlery design/shape
Integrated Circuit Topography
Integrated 3D design in semi-conductors
Designer 10 years Custom chips
Trade Secrets Anything n/a Indefinite Secret sauce, coca-cola recipe
Types of Intellectual Property Protection
Type Covers Rights Terms Examples
Patent Device, process, composition of matter
Inventor 20 years
Copyright Material form of composition
Author, creator Author’s life + 50 years
Books, software, music
Trademark Identifiable mark 15 years (renewable)
Logo, slogan
Plant Breeder Rights
Variety of plant Breeder 18 years Quantum Canola
Industrial Design
Aesthetic design of product
Designer 10 years Rug, cutlery design/shape
Integrated Circuit Topography
Integrated 3D design in semi-conductors
Designer 10 years Custom chips
Trade Secrets Anything n/a Indefinite Secret sauce, coca-cola recipe
Patenting Software? Some debate over whether software may be patented, especially
in Canada US Law: Software ITSELF is NOT patentable “software-based” inventions ARE patentable:
Inventions using software to produce a useful result Examples:
Software connected to and running hardware Software that processes data & produces useful result Internet business method patents, such as Amazon “1-Click”
In Canada, it’s even less clear.
Why apply for a patent? Patent holder can stop others from making, using,
selling, and importing the invention protected by the patent
Patent holder can also give/rent/sell these rights to others, usually for a fee (called “licensing” or “assignment”)
Investors are often looking for a robust “patent portfolio” prior to investing money in a new company or product
What can be protected by Patents? Patent protection applies to inventions only. For an
invention to be patentable it must be: An art, process, machine, manufacture or
composition of matter or an improvement to such that is: New Useful, and Non-obvious
GB Patent 2272154: Spider Ladder
A spider ladder comprises a thin flexible Latex rubber strip (1) and a suction pad (5), the strip is designed to follow the inner contours of a bath. Suction pad (5) enables the strip to be positioned on or near the top edge of a bath. In use the suction pad is positioned on or near the top edge of a bath and the strip is allowed to fall under gravity down the inner contours of a bath. Trapped spiders searching for an escape route will scale the spider ladder by means of (2) and (3) the inner and outer steps respectively.
“Novelty” means that: at least one aspect of the invention is novel the invention is a combination of known elements
not previously seen together new use for an existing product NOT PREVIOUSLY DISCLOSED
Is it NEW?
What Constitutes Disclosure? Releasing important, novel details of the
invention. Loss of control of who learns about the
invention. Discussions under a non-disclosure agreement
or within the same institute are not disclosure. Presentation to anyone who hasn’t signed a
confidentiality agreement
The REAL question:
Is not typically:
“Can I patent my software?”
But instead should be
“SHOULD I patent my software?”
Types of Intellectual Property Protection
Type Covers Rights Terms Examples
Patent Device, process, composition of matter
Inventor 20 years
Copyright Material form of composition
Author, creator Author’s life + 50 years
Books, software, music
Trademark Identifiable mark 15 years (renewable)
Logo, slogan
Plant Breeder Rights
Variety of plant Breeder 18 years Quantum Canola
Industrial Design
Aesthetic design of product
Designer 10 years Rug, cutlery design/shape
Integrated Circuit Topography
Integrated 3D design in semi-conductors
Designer 10 years Custom chips
Trade Secrets Anything n/a Indefinite Secret sauce, coca-cola recipe
Copyright “copyright” is a set of distinct rights conferred by statute. The
owner of copyright has a right to: Produce or reproduce a work in any material form; Perform or deliver the work in public; Publish an unpublished work, and Give others the rights to do so.
Copyright vests in its owner the power to stop others from doing the things that a copyright owner has the right to do, and also protects the integrity of works through “moral rights”
© 2008 Barbara Eccles
Theory Copyright does not protect IDEAS Copyright protects the EXPRESSION OF IDEAS Consequence of this:
Anyone can follow the ideas set out in copyright protected thing: i.e. build a deck out of a “How to Build a Deck” book
Anyone can independently write a computer program that has the same result as your computer program
Why register copyright? Copyright arises as soon as the subject matter of
the copyright is created. There is no need to “mark” your works, but it is
recommended. i.e. Copyright © Barb Eccles, 2007. There is no need to “deposit” your works with
anyone, but it can help in enforcing your rights Registration is not required, but is recommended Registration is prima facie evidence of ownership
© 2008 Barbara Eccles
Three main kinds of “rights” in copyright
Economic rights (in “works”) Copyright protects economic interests of creators &
owners of “works” (musical, literary, artistic, and dramatic) Neighbouring rights (in “other subject matter”)
Protects economic rights of “other subject matter” (performances, sound recordings, and broadcasts)
Moral rights (in “works”) Protects the integrity and personality of the creator
(author) of a “work”
© 2008 Barbara Eccles
WORKS: Eligible “works” “works” are protected by copyright laws upon
creation or coming into existence, AS LONG AS: It is original It is fixed Nationality of creator/place of publication
© 2008 Barbara Eccles
Literary Works Exists if author used skill, labour, and ingenuity to
arrange thoughts: Books, pamphlets, letters, memos, email, school
assignments, exams Lectures, addresses, speeches, sermons Translations Computer programs
© 2008 Barbara Eccles
Dramatic Works “any piece for recitation, choreographic work or mime, the scenic
arrangement or acting form which is fixed in writing or otherwise” Scripts for ratio, TV, film, CD-ROMs Plays, Radio programs, operas, musicals, comedies “cinematographs” (i.e. audio-visual materials) expressed by a
process “analogous to cinematography” Films/videos that follow a script Improvised works, film of news item, home videos
Sound tracks Choreographic works: any work of choreography, with or without
a story line
© 2008 Barbara Eccles
Musical Works “any work of music or musical composition, with or
without works, and includes any compilation thereof.”
It is the composition or song, but NOT a CD or other sound recording embodying the composition or song Sheet music Arrangements, adaptations
© 2008 Barbara Eccles
Artistic Works Generally, “artistic” doesn’t mean it must be ascetically pleasing, or
be valuable as determined by art community Applies to works in a “visual medium”, including:
Paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, comic strips
works of artistic craftsmanship: “artistic” in this sense means it must possess an artistic character (admired & valued for appearance, gives emotional or intellectual pleasure or satisfaction)
architectural works (buildings, models of buildings) Fictional characters: certain ASPECTS may be an artistic work Compilations of artistic works
© 2008 Barbara Eccles
Combinations of Works Collective work: ”any work written in distinct parts by different
authors, or in which works or parts of works of different authors are incorporated” Newspapers, encyclopedia, magazines
Compilation “a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or parts thereof, or a work resulting from the selection or arrangement of data” Copyright in compilation will only exist in certain circumstances Databases: assembly of facts, data, content, and/or information
in an organized format, where individual components may be accessed. Database itself, not collection of data, is protected
© 2008 Barbara Eccles
Moral Rights Protect personality, honour & reputation of
artist/author Cannot be “assigned” by author (except on death),
but can be waived Three main categories
Right of paternity Right of integrity Right of association
© 2008 Barbara Eccles
Neighbouring Rights in Other Subject Matter Like copyright, but instead of being rights to “work”,
are rights to “other subject matter” “Other subject-matter” includes Sound recordings,
performances, & broadcasts (or communication) signals
DISTINCTION: copyright are rights granted to creators & owners of “works”, while neighbouring rights are granted to users of “works”
© 2008 Barbara Eccles
Performers’ Performances “live performances such as a musician performing a song, a
person reading a novel or poem, or an actor acting in a play”. Also performance of public domain work
Includes: Improvisation of dramatic, musical, or literary work Jam session Recorded performance ar, author, singer, musician and
dancer on variety of media including tape, CD-ROMs, video and film, and compilations thereof
Copyright protection in performers’ performance is DIFFERENT than the “right of public performance”
© 2008 Barbara Eccles
Neighbouring Rights: performer’s performance Performer protected against unauthorised fixation of
performance Performer protected against unauthorised
reproduction or broadcast of live performance Performer has right to authorise recording of
performance, or reproduction/broadcast of performance
Sometimes rental of performance is included as well
© 2008 Barbara Eccles
Sound Recordings “a recording, fixed in any material form, consisting of sounds,
whether or not of a performance of a work” Excludes sound track of a film wre the sound track
accompanies the film Examples:
Music, acted out drama, lecture, recorded seminars Recording of bird chirping
Could be 3 copyrights when a sound recording involved: 1st: in sound recording. 2nd: in musical work. 3rd: in
performer’s performance
© 2008 Barbara Eccles
Music Videos Components of music video may be protected in
different manners: Music likely as sound recording Visual aspect, under “audio-visual” category
discussed earlier
© 2008 Barbara Eccles
Communication Signals “radio waves transmitted through space without any
artificial guide, for reception by the public”, and include: TV broadcasts Pay-per-view broadcasts Radio signals
Do not include: Satellite or cable retransmitted signals
© 2008 Barbara Eccles
Who do you think owns copyright? In these situations …
As a student, you write an essay in MS Word and submit it for course credit?
As a business owner, you prepare a power point presentation and present it to investors?
You hire employees who create multi-media advertising tools for your company?
You hire an outside advertising agency to create a website for your company?
© 2008 Barbara Eccles
Who owns copyright interests? General rule, set out in Copyright Act: “Subject to
this Act, the author of a work shall be the first owner of the copyright therein”
Some specific exceptions to this, however, stated in the Act, such as employees & apprentices
There are no “authors” of “other subject-matter”, just owners
“authorship” and “ownership” are separate.
© 2008 Barbara Eccles
Ownership with Other Subject-Matter Performers’ Performance: performer owns the copyright in the
performance Sound Recordings: “maker” (or “person by whom the
arrangements necessary for the first fixation of the sounds are undertaken”) of recording owns copyright in it
Communication Signals: broadcaster (“a body that, in the course of operating a broadcasting undertaking, broadcasts a communication signal in accordance with the law of the country in which the broadcasting undertaking is carried on”) is owner of copyright in signal. NOTE: excludes “retransmission” broadcasters
© 2008 Barbara Eccles
Copyright duration General rule (often called “life-plus-fifty rule”)
“life of the author, the rest of the calendar year in which an author dies, and a period of 50 years following the end of that calendar year”
Q: if author passed away June 17, 1956, when will copyright expire? A: December 31, 2006
There are some exceptions to the general rule
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Limitations on copyright: general
All or substantially all Fair Dealing (for research, private study, criticism,
review, or news reporting) Parody Public recitation of extracts Legislative, judicial & administrative proceedings
© 2008 Barbara Eccles
All or Substantial Part of Work “copyright” applies to all or a substantial part of a
work Copying less than a substantial part of a work is
NOT prohibited by copyright laws “substantial part” is not easy to define
Courts look at “quantity copied” and whether copied portion is an important part of the work
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Fair Dealing USA has broader concept of “fair use” Still not clear what “fair dealing” encompasses WE DO KNOW the following:
Use must fit under one of these purposes: research, private study, criticism, review & news reporting AND
Overall use must be “fair”
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Fair Dealing, cont’d To determine “fairness”, courts do a quantitative and
qualitative analysis, and consider other factors too “research, private study, criticism, review & news
reporting” not defined in Act During use, MUST mention source & author’s (or
artist or performer) name if known.
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Limitations on copyright: specific works Computer programs Private copying of sound recordings Television broadcast time shifting Moulds of artistic works … reusing Works permanently situated in public place Incidental uses of copyright materials Private importation of works
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Computer programs ONLY APPLIES TO OWNER OF PROGRAM: not
renter or someone who borrows Back-up copy Adaptation, modification, conversion or translation
for personal use and for compatibility reasons The copy/adaptation must be destroyed when you
cease to own original one
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Private copying Sound recordings
Levy on blank audio media TV broadcasts
No specific provisions for this
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Works in Public Places Applies to works permanently situated in one public
place (not one that moves from gallery to gallery), and includes architectural works
Anyone can make painting, drawing, engraving, photograph, cinematographic work & publish same of the other work
Incidental inclusion of copyright protected material in other material … ie news crew filming street scene with music playing in background
(c) 2006, Barb Eccles. Source: Leslie Ellen Harris,
Canadian Copyright Law.
Special exemptions for certain organisations Schools: all levels of non-profit educational
institutions Libraries, archives Museums News (reporting & summary), Broadcasters Persons with perceptual disabilities Places of worship Agricultural, agricultural-industrial exhibition or fair
© 2008 Barbara Eccles
School Exemptions Instructors:
Manual copy for projection/display Tests and exams Taping radio & TV programs
Student performances Live performances of plays or musical works Playing sound recordings Playing radio or TV programs live
Publication of short passages in a collection
Innovation Management Office
Types of Intellectual Property Protection
Type Covers Rights Terms Examples
Patent Device, process, composition of matter
Inventor 20 years
Copyright Material form of composition
Author, creator Author’s life + 50 years
Books, software, music
Trademark Identifiable mark 15 years (renewable)
Logo, slogan
Plant Breeder Rights
Variety of plant Breeder 18 years Quantum Canola
Industrial Design
Aesthetic design of product
Designer 10 years Rug, cutlery design/shape
Integrated Circuit Topography
Integrated 3D design in semi-conductors
Designer 10 years Custom chips
Trade Secrets Anything n/a Indefinite Secret sauce, coca-cola recipe
© 2008 Barbara Eccles
Trade Secret “Keep the details to yourself” i.e. Coca-Cola formula or
Colonel Sanders’ recipe. Impractical approach in academic environment - too much
pressure to publish and too many public interactions. University research lab is not a corporate “skunk-works” -
can’t keep under wraps until fully ready...
© 2008 Barbara Eccles
What to keep secret? Patentable IP, at least until patent app. Filed Trade secrets Copyright & trademarks? Not necessarily
Business question with some is: do you have the resources to enforce your IP protection? Police it?
© 2008 Barbara Eccles
How to keep a secret … Confidentiality Agreements (CDAs, NDAs) Government FIPPA & Privacy legislation Certain professionals have confidentiality duties
Often is a need to disclose to some to get the assistance needed to commercialize
Innovation Management Office1294 Balmoral Street Main: 807.343.8724(NOTC Building) Fax: 807.766.7178
Thunder Bay, ON
innovations.lakeheadu.ca
Call us for help!
Barb Eccles, HBSc, JD
Manager, Technology Transfer
Tel: 807.343.8184
Cel: 807.626.2405
Bruce Holm, HBComm
Manager, Industry Liaison
Tel: 807.343.8793