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IP
/ IT LAW (Intellectual Property / Information Technology)
(IP covers Copyright, Trademark, Patent, etc.; IT covers
Internet, E-commerce, Computer or Cyber law)
My fees are $240 per hour. (Initial consultations $2 a minute, e.g. 45 minutes
costs $90, cash only for in-person consults; telephone consults can be done
if you priovde a major credit card number, and there is a 30 minute or $60 minimum).
GST does not apply to consultations, legal research and legal advice; otherwise
GST and PST (as of mid 2010) applies. Disbursement expeditures necessarily incuured
on your behalf are not included in the hourly rate and are additional.
Why pay $400 - $800 per hour for a prestigious "tower"
firm when most of that is going toward their huge rent, advertising, high-paid
secretaries, senior partner's "cut" etc? Do you want good legal advice
from a lawyer, or good legal advice from a lawyer who charges a huge hourly
rate because of his or her high overhead? We study the same law and attend the
same conferences, but I am not under pressure from Senior Partners to bill thousands
per day.
Shown below is Dr. Montgomery's security pass card from when he was a Senior Statistician with the New Zealand government.
IP:
TRADEMARKS
COPYRIGHTS
DOMAIN NAMES (URLs)
PASSING OFF
INDUSTRIAL DESIGNS
ELECTRICAL CIRCUITS
PATENTS
TRADEMARKS: Advice available on the procedures
and likelihood of success in the establishment of a Trademark (including a trade
name) and regarding infringement of trade marks (whether you are plaintiff or
defendant). Did you know that in Canada you cannot even incorporate
a company with a name that sounds similar to another party's trademark, unless
you can convince the registrar that your company's business will be so different
that no customer could mistake one for the other? Could you register a company
aimed at making underwear and sweaters out of tiny fibers and call it "Microsoft"?
The legal test is confusion on the part of potential customers or consumers.
As a common example of trademark infringement, brands of weiners and beer seem
especially prone to competitors selling cheaper products with similar (thus
misleading and confusing) labels. "Beware of imitations." Trade marks include
trade names. Forging somone else's trademark to put on your own goods (or website
or stationery or business card) or making a copy of someone else's mark (or
name) and putting it on your own goods or documents is a crime in Canada. so
violators could be fined, ordered to make restitution, or sentenced to a jail
term. For more detailed information on trademarks in Canada visit: http://www.ipic.ca/english/general/trademarks.cfm
(the site of the Intellectual Property Institute of Canada) -or-
http://strategis.gc.ca/sc_mrksv/cipo/tm/tm_gd_main-e.html . (The latter is the
Canadian government site and it has a useful FAQ page and you can search TM
registrations and applications in the online Trade-marks Journal back to the
year 2000.)
Useful information is also available on the US government site www.USPTO.gov. That site allows you to use "TESS" to conduct a preliminary search of US Trademarks on your own. A private site with lists of mainly US patent and trademark agents is www.USPTO.org
Below is a copy of Randal Montgomery's Trade Mark Agent certificate.
COPYRIGHTS: Advice on establishing
or defending breaches of copy rights. Any original computer program
or performance or work of art - including music, visual art, writing, even a
boring directory or compilation of names and addresses- that you created in
Canada, you probably own the copyright to, as distinct from inventions which
must be patented. (For photographs the law is more complex but by sometime in
2006 when revisions to the Copyright Act are passed, will probably be the same
as ordinary artwork, i.e. whoever takes the photo owns the copy right.) In common
parlance "pirated" goods such as CDs and DVDs are copies made from
originals or from movie theatre showings without the knowledge and permission
of the copyright holders. Piracy is a good description because these are actually
thefts of property - intellectual property. If you are a musician and you perform
a Bob Dylan song without his permission (and paying him the royalty he will
want) you have breached copyright. Ditto if you sing "Happy Birthday"
(but your party is not likely to be raided by lawyers from owners AOL Time Warner
unless you are getting paid to sing and/or it is a public or commercial venue
or you plan to sell copies of the video of the party). If you make photocopies
of any written material or of a photo or painting, or print-out something off
the internet, you MAY be breaking the law. It depends on whether the original
was copy righted, the exact terms of the copy rights, and for what use you copied
and how many copies etc. Illicit copies of software, music, movies, publications,
and logos are forms of theft from the creators, developers and marketers.
For more info on copyright in Canada visit:
http://www.ipic.ca/english/general/copyright.cfm -or- http://strategis.ic.gc.ca/sc_mrksv/cipo/cp/cp_main-e.html
(The latter is the Cdn. govt. site and has a database you can search.)
Useful information is also available on the US government site www.USPTO.gov (the main US IP website) and specifically for copyright follows the links at http://www.copyright.gov
DOMAIN NAME disputes: These are a modern form of global IP that are not exactly trademarks or copyrighted. The law is still evolving. For .ca URL's go to www.CIRA.ca. For .com and other US based URL's go to www.INTERNIC.org who handle registrations etc. and have useful info, and they also have a hot link to www.ICANN.org for full-blown disputes.
PASSING OFF: Similar to Copyright but covered under private rather than public law, there is the tort of "passing off" A's goods or services or creations (or websites) as B's, to which damages may be claimed. In common parlance these are called "knock offs". e.g. fake "Rolex" watches and fake "Gucci" fashion accessories. Passing Off is also a crime in Canada's Criminal Code, so violators could be fined, ordered to make restitution, or sentenced to a jail term.
INDUSTRIAL DESIGNS: There are also
Industrial Designs which are a separate category, neither under copyright or
patent.
For more information about the legal aspects of Industrial Design in Canada visit:
http://strategis.gc.ca/sc_mrksv/cipo/id/id_gd_main-e.html
INTEGRATED CIRCUIT TOPOGRAPHIES:
With the advent of transistorized electronics and the use of tiny printed circuits,
commonly seen in computers, Canada has a law dealing with circuit design. For
information visit:
http://strategis.gc.ca/sc_mrksv/cipo/ict/ict_gd_main-e.html
Following is an excerpt from the above site:
| The Act and Regulations refer to the "microchips" which
embody such integrated circuits as "integrated circuit products". Today's
integrated circuit products are constructed from a complex series of layers
of semi-conductors, metals, insulators and other materials on a substrate.
The Act and Regulations |
 |
PATENTS:
INTRODUCTION: A useful link is to the Canadian government's intellectual
property site, which for patents is:
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html
Another useful starting point is the Canadian Intellectual Property Institute's website which for patents is at:
http://www.ipic.ca/english/general/patents.cfm .
A patent is temporary (expires after 20 years) legal protection against others copying your invention or other patentable entity. Some people want to patent a great idea. You cannot patent ideas. Nor can you patent a marketing plan (because that is just a detailed idea). In Canada you can copyright a computer program whereas in the US you can patent it. If you discover something you cannot patent it but you can patent an invention based on your discovery (including a drug or manudacturing process). You can patent medicine (pharmaceutical drugs) but not a medical procedure. You can patent products or devices or machines, chemical compositions (not just formulae), or improvements to any of those which are already patented and not expired. (You will need to enter into an agreement with the holder of the original unexpired patent if ou want to sell this improvement. Actually 90% of patents are for improvements to existing ones. Of course it must be a real improvement and not just a minor refinement.) A patentable entity must be (a) novel and original and unique, and not something anyone working in that field could have thought of, whether they tried to patent it or not, (b) function or work properly and consistently and not still be at the development stage with "bugs" or "glitches", or have unpredictable effects, (c) serve a purpose or useful function e.g. to be sold on a market, benefit society, educate in a school, or entertain. (If it is merely a demonstration of something that the inventor finds fascinating but no one else would want, it fails). If you file too early the entity may not work properly or be rejected because the specifications are too general and not specific enough, and the application will be rejected. If you file too late someone else may beat you to the patent office.
SECRECY: Some people are afraid that by getting blueprints made or models made or the actual entity made, the people they hire to do so will "steal their idea" and sell it or patent it first. Also it is feared that if the hired party, or even anyone you talk to such as me or a bank where you seek a loan, breaks the promise of secrecy and publicizes the idea, they will be considered the inventor rather than you. This is unlikely given that you cannot patent an idea, publicizing an idea per se should not harm you, and even if the other party has access to all the details it takes time and money to patent anything (and many applications are rejected meaning wasted time and money). It is a chance the inventor has to take. Also, in Canada and the USA and Brazil, if a second party publicizes details of your application before you do, you still have one year to file it at the patent office. (After one year it is a race like any other country and whoever files first wins.) This one year protection does not affect strangers who may have thought of the same thing as you on thier own. It only cuts off people you talked to, or who learned of your invention from people you talked to (or nowadays e-mailed about about). However in Canada and the USA and Brazil, if a second party steals your secret from you more than a year before you file and publicizes it so that it is in the public domain, you will be prevented from patenting it (because it will no longer be new and unique to you). So do not reveal details to your spouse if you anticipate a divorce, or to a business associate you are getting along badly with or an employee you do not trust. I can draft a confidentiality agreement for you which means (if the other party signs it) that if the other party tries to steal your secret it will still belong to you any profits they make will belong to you. You may be tempted to keep your patentable entity secret until you are ready to market it or sell it to a wealthy second party. This is called a "trade secret". Again, I can draft a confidentiality agreement for you and the second party. But what if in the meantime some third party patents or markets a similar entity? You will be left with nothing.
SEARCHING: The first thing to do is search the patent listings in your own country, then other countries. You can do a preliminary search yourself online using free web-accessable databases on the website of the Canadian and US governments. If your online search reveals very similar entities which are still patented, forget about trying to patent the entity yourself. Either quit or consider contacting the patent holder about marketing their entity if it is not already being marketed. If your preliminary online search does not reveal any very similar entity (I recommend hiring a search company as they are experts and can work much faster and more efficiently than you, providing you provide them with all the specifications.) If the preliminary internet search suggests you are onto something truly unique, or a real improvement on an existing patent, you should do a second stage search. You can go to to the city of Gatineau Quebec and search the official Canadian and US databases using the computer program there. The staff can provide basic assistance but will not search for you. Better to hire a search company (which I can do for you) for this second stage. Money spent at the front end will save wasting a lot more money later on. The search will cover not only patents existing but those expired, those applied for and those listed 18 months after being filed.
THE PROCEDURE (and some business advice): Returning to the patent process, I advise anyone not to go ahead with trying to patent, or make or sell, the entity until they have done a patent search. It is likely (with 1.5 M patents in Canada, 6M in the USA, millions more in Europe etc.) that you are not the first inventor and someone else previously patented the entity. So do not waste time and energy and money when you could be accused of breaching someone else's patent. If a search shows that the other patent expired you can go ahead but from a business competition view ensure no other company is marketing the entity, if they are does it make sense to compete with them, and even if no one is marketing the entity, find out why. Perhaps there are good business reasons not to make something. It may be obsolete or too expensive to make or illegal to make nowadays (contain asbestos, pollute too much, has been found to be unsafe or original patent holder was sued). On the other hand the inline roller skate was patented ages ago, never marketed, the patent expired, and in the 1990's a company made the skates which are now commonplace. A good place to start is the Cdn. govt. site http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html
Assuming you want to go ahead with the third stage (after preliminary and second stage searches) this is called Filing. (The next step is Applying for a patent, which can be done anytime within five years after filing.) 18 months after you file your patent information in Canada (or any other country) that government will publish it for the whole world to see. (Whether or not you took the 4th step of applying for a patent.) Some clients are alarmed at this because they still don't have a patent granted or perhaps even applied for and now anyone can learn all about their invention. Clients fear that this publication will allow strangers to copy the entity and start marketing it. This publicaton is necessary to assist people (such as you) doing patent searches. You alternative is to keep a trade secret (see above). Of course if the patent is formally applied for or granted the information is still out there for the whole world to see. Clients wonder how their entity can be protected if the government publicizes it. This is because the purpose of patenting is a balance between protecting inventors so they can make a profit and to benefit society. On the one hand inventors are encouraged with the hope of getting a 20 year monoploy and getting rich, on the other hand patents expire after 20 years so that others can make them and the price will become lower due to competition. To the socialists I say that not granting 20 years of protection would be bad for social prgress as there would be far, far fewer inventions (many of which relate to health and science). To the capitalists I say that a perpetual monoply in favor of the original patent holder, although it would encourage a few more of the very expensive inventions, would be bad for society. By publishing patent filings and applications and granted patents and expired patents, anyone can learn what others have done. Of course the final reason is to help persons such as you from wasting time and money on a project regarding an entity someone else owns. (Or to encourage you if that patent has expired or has yet to exist.) If the government kept your patent secret how would a stranger know that he should not copy it?
Once a patent is filed (in any country) anyone (from any country) can challenge it, either by a query ("prior art" question) or a formal protest alleging that it violates or infringes on their own patent. These two types of challenges can also occur during tha application process (remember you have up to file years after filing to apply) which takes 2-3 years in Canada, and even during the 20 years of patent if one is granted. So you are never 100% assured that you truly own a patent. (But that is a good thing if you are a patent holder who thinks some upstart is trying to copy and register your patent, i.e. you are the challlenger.)
For your application to be sucessful it must resist challenges from the public and the government examiner must be satisifed that, based on his own search, it does not infringe on others' applications or patents. The application must consist of a written summary ("abstract") and detailed specifications and where possible or useful drawings ("blueprints"). At some point you may be asked to provide a working model or a specimen. The application must be presented by a government registered Patent Agent. I can either refer you to one to take over the case, or hire one (in Canada, USA, Germany etc.) to work under me so I can maintain overall, international control of your case if you so desire. They are very expensive ($400, $500 or more per hour) so to save you money I can help you prepare a draft application which the registered Patent Agent can refine and present and monitor and fight challenges to for you. Basically I can help you at the early stages (information, advice, subcontracting a Search Company) at $150 per hour to save you money for when you really need a Patent Agent (if your prject ever reaches that stage).
APPLYING OUTSIDE CANADA (FOREIGN PATENT PROTECTION): Obtaining a Canadian patent does not protect your invention in another country. If you wish such protection, you will have to apply for foreign patents. ( The URL of the US Patent office is: http://www.uspto.gov/main/patents.htm . A private site with lists of mainly US patent and trademark agents is www.USPTO.org)
Suppose, for example, you've invented a mountain-climbing snowmobile and hope to corner the market in countries where the machine may be in demand. An applicant for a patent who does not appear to reside or carry on business at a specified address in a given country must appoint as a representative a person or firm residing or carrying on business at a specified address in that country (e.g. a Patent Agent registered in that country). Consider the example of a mountain-climbing snowmobile. You'll probably want a patent not only in Canada, but also in the United States, Austria, Germany, and so on, wherever such a vehicle could be used. You might also want a patent in Japan, where many snowmobiles are manufactured. Otherwise, someone in one of those countries might copy your invention and market it in competition with you. For addresses of foreign patent offices write to Canada's Commissioner of Patents, who will supply you with addresses. However instead of applying directly to foreign patent offices, you may apply for a foreign patent either within Canada, via the Patent Office under the Patent Cooperation Treaty (PCT). But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws. In most countries, for example, you lose the right to a patent if your invention is disclosed before the filing date. (In Canada and the USA there is an exception.) Also, note that many countries require that your patented invention be manufactured or otherwise put into operation in that country within a certain period, usually three years. In some places you may even have to allow some other company or individual to manufacture your invention. (This is called granting a compulsory licence.)
Application for a foreign patent within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization, (WIPO) in Geneva. The PCT provides a standardized international filing procedure, which is shared by our principal trading partners, including the United States, Japan, and most of the European Community. Under the PCT, you may file for a patent in as many as 123 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and enables you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agent's fees, you can file in one language and have up to 30 months to pay some of these fees. This gives you more time to raise capital, conduct market studies, etc.
Only nationals and residents of Canada can file under the PCT in Canada.When you file under the PCT, you will receive an international search report, which checks your international application against other applications and patents, and an initial opinion on the patentability of your invention. You then have the option to engage into a dialogue with an examiner with the possibility of amending the application, and ultimately receive an international preliminary report on patentability. This is no guarantee of a patent. Local patent offices in the countries to which you apply reserve the right to conduct their own examinations, but they often accept the international examination report. This means you will receive a fairly reliable indication of whether it's worthwhile to seek multiple patents in foreign countries before fees are due.
Your application for foreign patents filed under the PCT through the Patent
Office must be in English or French. You may also be required to provide for
translation into the languages of the designated countries if you choose to
continue in those countries. Eighteen months after filing in the foreign country,
your application will be disclosed to the public in the foreign country.
(Your application made in Canada under the PCT automatically qualifies for a
normal national filing for a Canadian patent if you have designated Canada.)
Many countries, like Canada, belong to the Paris Convention for the Protection
of Industrial Property, a treaty that allows you to invoke what is called "convention
priority." This means that your filing date in one member country will
be recognized by all the others provided you also file in those countries
within a year of filing in the first one. For example, if you filed
in Canada on January 1, 2004, you could file up to one year later in most countries
(January 1, 2005) and still be accorded the same rights as if you had filed
there in 2004.
Under the Paris Convention, you can file an application abroad, and then
in Canada. The Patent Office will recognize the earlier filing date as your
convention date if you claim "convention priority" within four months
of the Canadian filing date. The Canadian filing date must be within 12
months of the convention date. However, your application will be published 18
months after your convention date, not your filing date in Canada.
Note that being granted a patent in one country may prevent you from getting
one in another if you delay too long in filing for the second patent. e.g. if
you first obtain a patent for your entity in Sweden, it will not be considered
"new" in another country e.g. Canada, (because of the Paris Convention)
so you will not be allowed to patent it in Canada any other country. Likewise
if you first patent in Canada and wait too long you won't be able to patent
in Sweden, the USA or anywhere else even though you are the inventor. So you
must file your various applications all within one year in order to receive
the benefits of "convention priority" in the other countries.
Under the current Act it is now possible to claim priority based on an earlier
filed Canadian application.
