Intellectual Property

Intellectual property can be the most valuable asset of a commercializing life sciences firm. Intellectual property rights is an emerging issue in the life sciences, which involves many sectors of society, including government, business, and consumer groups.

·         Overview

·         Non-Disclosure Agreements

·         Intellectual Property Information Sources

·         Intellectual Property Acts

·         Intellectual Property Agents/Lawyers

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Overview

Intellectual property rights vary from country to country. In Canada, the Canadian Intellectual Property Office (CIPO) is responsible for administering Canada's intellectual property system. The following table lists Canadian definitions and provisions. Of these, patent law is the most important to firms in life sciences due to the unique nature of their inventions.

List of Canadian Intellectual Property Definitions and Provisions:

Patents

Description:

A patent excludes others from making, using, or selling an invention for up to 20 years after the filing date. Patents cover new inventions (processes, machines, manufactures, composition of matter) or useful improvements on existing inventions only. 

Three Basic Criteria:

• The invention must be novel: the first original invention of its kind.
• The invention must have utility: It must work, and have a useful function.
• There must be inventive ingenuity: It cannot be obvious to someone who is skilled in the area.

Trade-marks

Description:
The core asset behind the brand value of a product, service or process. A trademark is a distinguishable mark, which can be in the form of a word(s) (i.e., the word Prozac^tm is a trademark), symbol(s) such as a company logo, or a design, which can involve a unique colour scheme or inventive packaging, etc. A trademark is valid for 15 years, but can be renewed indefinitely.

Six Basic Criteria:

1.    Cannot trademark a name or surname.

2.    Cannot register a clearly descriptive word (such as an adjective) in English or any other language.

3.    Cannot indicate a place of origin.

4.    Cannot be "deceptively misdescriptive."

5.    Cannot be confusingly similar to another trademark.

6.    Cannot trademark prohibited marks (such as the Canadian Flag

Copyrights

Description:
A copyright provides the creator or owner of literary, dramatic, musical, and artistic work to the exclusive right to copy the work in question, typically for the life of the creator plus 50 years. 

Three Basic Criteria:

1.    Must be an original work.

2.    Must be more substantial than a name, title, or a short word combination.

3.    Cannot copyright factual information.

Industrial Designs

Description:
An industrial design refers to the protection of original physical features of a product, such as shape, configuration, pattern, or ornament (or any combination of these), for a period of five years (renewable once, for a second five years).

Criterion:

1.    Must have original features that "appeal to the eye."

Integrated Circuit Topographies

Description:
The three-dimensional configuration of microchips which embody semiconductor integrated circuits can be registered and protected for up to 10 years. 

Criterion:
Must be an original topography.

Non-Disclosure Agreements

Non-disclosure agreements are particularly useful in situations where confidential information is being shared with a third party, including the distribution of a business plan to venture capitalists, or the licensing of a life sciences product to a large corporation.

Description:

A signed acknowledgment by the recipient of information that the information is owned by someone else and cannot be disclosed to a third party, nor can it be exploited by the recipient for personal gain. Non-disclosure agreements are particularly important when sharing results from a scientific breakthrough with another party. They are often used to prevent former employees from sharing information with competitors.

Criterion:

1.    Must be a signed, legal document.

Intellectual Property Information Sources

The following links provide Canadian and international sources of intellectual property information.

·         Canada's Intellectual Property Policy Directorate

·         Intellectual Property Institute of Canada

Intellectual Property Acts

·         Patent Act

·         Trade-marks Act

·         Plant Breeder's Rights Act

·         Copyright Act

·         Industrial Design Act

·         Integrated Circuit Topography Act

Intellectual Property Agents/Lawyers

Many professional services firms in Canada provide intellectual property assistance to commercializing firms in the life sciences sector. Some of these firms can be found via the Canadian Company Capabilities database. Also, PATSCAN provides a list of intellectual property lawyers by province.

Patents, trade-marks, copyright, industrial designs and similar rights are referred to as "intellectual property". These rights are "property" in the sense that they are based on the legal right to exclude others from using the property and in that ownership of the rights can be transferred. The rights are "intellectual" in the sense that they protect intangible subjects, usually arising out of some form of human creativity.

Patents protect inventions, such as machines, devices, methods and compositions of matter. Trade-mark rights protect words, designs, numbers, two-dimensional or three-dimensional forms, sounds or colors (or a combination of two or more of these elements) used to distinguish the products or services of one trader from those of others in the marketplace. Copyright protects literary (including computer programs), artistic, musical and dramatic works. Related rights include trade secrets, industrial designs, integrated circuit topographies, plant breeders' rights, and personality rights such as the right to the image.

Each of these rights is quite different from the others. For example, the inventor of a new interlocking paving stone may be able to obtain a patent on the method of making the stone and the aspects of the structure of the stone which permit it to interlock. An industrial design registration may also be obtained covering decorative features in the shape of the stone. The name under which the stone is sold may be protected by a trade-mark registration. Finally, information which may be presented in booklets or videos describing how to install the stones may be protected by copyright.

Websites are another example of how different intellectual property rights might exist and cross each other. Starting with the domain name registration for the website, one or many trade-marks may be used (words, designs, slogans) in association with wares or services which themselves might be covered by copyright, patent or industrial design protection. There may also be copyright protection in the text, database or artistic work appearing on the website or even in a song or music played while consulting the website. Each of these forms of intellectual property gives a right to different but possibly related protection.

COCA-COLA is an example of a trade-mark for a soft drink. The formulation of the drink itself is a trade secret and not covered by a patent. As such, there is protection only so long as the formulation remains secret. The shape of the bottle was once protected as an industrial design. Patents may have been obtained in respect of bottling equipment. While alternative products are available under other trade-marks, such as PEPSI, competing products generally become established only after expenditure of considerable time and effort in marketing. In this example, the trade-mark rights may be the most valuable intellectual property right.

Trade-mark protection can be maintained indefinitely. Patent, copyright and industrial design protection are limited in time.

Patent agents and trade-mark agents are professionals who are registered to practice before the Patent Office and the Trade-marks Office. Respectively, Patent agents and trade-mark agents may not be lawyers although many are. Registered patent agents typically have expertise in one or more scientific disciplines and are experienced in analyzing inventions and in writing patent specifications and claims. Registered trade-mark agents and lawyers practising in the intellectual property field typically have expertise and are experienced in legal aspects of use of trade-marks and trade names, registration of trade-marks and maintenance and protection thereof.

The Intellectual Property Institute of Canada (IPIC) maintains lists of competent professionals who are trained and experienced in intellectual property law. Efforts made in advance of meeting with such a professional to understand the nature and scope of intellectual property rights can be useful in understanding the advice given and in making sound business decisions about such rights.

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Posted in: IP SYSTEM