What you should know about Intellectual property

Patent Cooperation Treaty: The Patent Cooperation Treaty ("PCT") is an international agreement among Canada and more than 100 other countries which permits an applicant to seek patent protection in many countries simultaneously, through the filing of a single PCT patent application. The PCT provides patent applicants with uniformity of filing requirements, search reports and preliminary examination reports, as well as centralized international publication of the application.

There are several stages in the PCT application process. Under the international phase of the current PCT system, subsequent to the filing of a PCT application, an international search report is produced by an International Search Authority ("ISA").

The search report cites relevant prior art uncovered by the ISA. Upon request by the applicant, a preliminary examination report is produced by an International Preliminary Examination Authority ("IPEA"). The preliminary examination includes a non-binding patentability opinion. The application and reports are published 18 months after the priority date of the patent application.

With the information provided by the search and preliminary examination reports, the applicant is able to determine whether to proceed to the national phase, and in which countries to seek patents. Thus, the PCT system allows the applicant to avoid paying unnecessary national fees where the search reveals insurmountable prior art, or the preliminary examination is very unfavorable to patentability.

Extension of Time Limit to Enter National Phase: Originally, the PCT required applicants to enter the national phase within 20 months of filing the application, unless preliminary examination was requested, in which case the applicant had 30 months to enter the national phase. In reforms adopted in 2001, this distinction was eliminated by extending the deadline to enter the national phase to 30 months in either case. In addition, certain countries and regions allow extensions to these deadlines under their national laws.

International Search and Preliminary Examination System: One result of the extension of time to 30 months within which the applicant may enter the national phase of a PCT application has been a reduction in the number of applicants requesting preliminary examination.

This has had. a detrimental effect on patent prosecution in smaller patent offices, particularly in developing countries, which have relied on the PCT preliminary examination reports prepared by the IPEAs.

In reforms which will have effect from January 1, 2004, the opinion component of the preliminary examination report, addressing whether the claimed invention appears to be novel, inventive and industrially applicable, has been added to the search report.

Designation System: At present, applicants are required to designate each country or region in which they would like their application to have effect. In addition to a basic international fee, a designation fee is payable for each country designated, to a maximum number of designation fees. The maximum number of designation fees is currently five.

Under reforms coming into effect January 1, 2004, all available countries will automatically be designated in a PCT application, and a flat international fee will be imposed, in lieu of the combined basic and designation fees.

Electronic Filing: Since January 2002, the legal and technical framework has been in place to enable PCT applicants to file and prosecute PCT applications electronically, once PCT receiving offices decide to accept such electronic filings.

Effective October 17, 2002, applications filed electronically will benefit from a fee reduction of 200 Swiss Francs (approximately $200).

Canada Named PCT Search and Examination Authority Under the current PCT system, while PCT applications may be filed in the Canadian Intellectual Property Office ("CIPO"), CIPO cannot act as an ISA

to issue international search reports or an IPEA to issue international preliminary examination reports.

Most Canadian applicants use the European Patent Office or the United States Patent Office for these services.

In 2002, the Canadian Commissioner of Patents was appointed as an ISA and as an IPEA under the PCT. CIPO will become the 11th patent office internationally to offer search and examination services for the PCT system. CIPO expects to begin offering ISA and IPEA services in the summer of 2004, permitting Canadian applicants to obtain search reports and preliminary examinations locally.

Conclusion: With the implementation of these PCT system reforms, and the expansion of PCT services offered by CIPO, patent applicants in Canada will benefit from an increasingly stream lined process as they seek international protection for their intellectual property.

Stephen R. Burri

How Long are Your Rights Protected by a Patent in Canada and the U.S.?

A patent is an exclusive property right granted by a Government to the patent owner, for a limited period of time, to exclude others from making, using, selling and importing the invention within a particular country, when the patent expires, the invention becomes part of the public domain, and anyone is free to make, use or sell the invention. A patent cannot be renewed.

In Canada: Generally, patents filed in Canada on or after October 1, 1989, have a term of protection of 20 years from the filing date of the patent. Where an application for a patent is filed before October 1, 1989, the term of the patent is 17 years from the date on which the patent issued. For patents filed before October 1, 1989, which are still in force as of July 12, 2001, the term of the patent is the longer of: (a) 17 years from the date on which the patent is issued; and or (b) 20 years from the filing date of the patent application.

In The United States: In general, with respect to U.S. utility patents (process, machine, manufacture, or composition) and U.S. plant patents, the term of protection is 20 years from the date of filing of the patent application (or if the application contains specific reference to an earlier filed application, 20 years from the date of filing of the earliest of such applications). This "20 years from the date of filing" term applies to patent applications filed on or after June 8, 1995.

However; the term of protection for patents filed before June 8, 1995 depends upon when the patent was filed, issued, and whether or not it expired before June 8,1995. For those patents that were filed, issued and expired before June 8, 1995, the term of the patent is 17 years from the date of the issuance (grant) of the patent.

Patents filed and issued before June 8, 1995, and still in force (un-expired) on June 8,1995, have a life which is the greater of (i) 17 years from the date of issuance of the patent; and (ii) 20 years from the date of filing of the patent application. Similarly, patents filed before June 8,1995, but which issued after June 8,1995, the term of protection of the patent is the greater or (i) 17 years from the date of issuance of the patent; and (ii) 20 years from the date of filing of the patent application.

It is important to note that patent terms can be extended under specific circumstances, such as extensions granted due to delays in processing of the patent application by the United States Patent and Trademark Office.

Caution - Maintenance Fees: In both Canada and the U.S., maintenance fees must be paid at specific intervals in order to keep the patent in force. In Canada, maintenance fees are also required to be paid while the patent application is pending in order to maintain the application. If maintenance fees are not paid at the prescribed time (or by the end of the "grace period" where applicable), the patent may expire automatically and before the "usual" patent term.

Therefore, it is critical to ensure that maintenance fees are closely monitored and paid in a timely manner in order to ensure that your patent remains in good standing.

Mina M. Ghana

Advantages to Trade-Marking Corporate Names

Anyone who has incorporated a trade name or registered a business style name should consider the advantages of registering the distinctive portion of such name as a trade-mark.

A trade-mark is a word or symbol used to distinguish the goods or services of a person from the goods or services of others in the marketplace.

Trade-marks may be registered under the Canadian Trade-Marks Act, which provides for a public registry system, setting forth the trade-mark, the goods and services for which it was registered, the owner of the mark, and the basis on which the trade-mark was registered.

Before registration is achieved, a trade-mark is examined as to registrability and published for opposition purposes. Once registered, the owner of the registered trade-mark has the exclusive right to use the trade-mark for the goods and services for which it is registered throughout Canada, and may institute court proceedings to prevent others from using a confusingly similar trade-mark.

The main advantage in registering the distinctive portion of a corporate name as a trade-mark lies in the exclusivity given to such trade-mark throughout Canada. The right to this exclusivity may not exist if the trade name is only registered as a corporate name, particularly in the case where the corporate name is registered only under a provincial statute, and more particularly if the corporate name has not been used so as to have become well known to the public.

Furthermore, the registration of a business style name does not confer any right to such name or style that one does not otherwise have.

Moreover, the registration of a trade-mark may set the stage for a company incorporated in one province to expand its business activity into the other provinces, in a manner so as to minimize the risk of encountering another company having the same or confusingly similar name that had been previously registered in that other province.

It makes good business sense to organize your company's activities so as to maximize the goodwill generated by your company through the concerted use of your company name, both as a trade name and a trade-mark, and to protect the good-will by registering the distinctive portion of the trade name.

Eugene J. A. Gierczak

IP Audits: Innovation and related Intellectual Property ("IP") is the lifeblood of most businesses.

Each business has particular needs and resources when it comes to protecting and commercializing IP. At Miller Thomson LLP, we view IP as an essential competitive tool that, if utilized strategically, can be crucial to advancing business objectives.

We have developed a unique set of tools for developing tailor-made strategies for companies to meet their long-term objectives as they relate to their IP, namely the -IP Audit". A short description of the IP Audit is included below.

Some IP Audits are one-day mandates resulting in a concise (5-6 page) document outlining a strategy for implementing better protection of key IP assets. Other firm-wide IP Audits are more involved, as the client's particular needs demand. If you are interested in learning more about this service, or would like to receive a quote for conducting an IP Audit, please feel free to contact Miller Thompson LLP.

Identifying IP Risk Hot Points: The first phase of the IP Audit is identifying the particular "IP Risk Hot Points" of the client. This involves taking an inventory of the IP assets of a business, either existing or under development. The status of any related IP filings or registrations is assessed and then risks to the protection of the business' IP are established.

Many people are familiar with IP issues. However, professionals have never conducted an IP Audit that did not identify a number of important risks (with serious business implications) posed to the IP of a client.

These risks may include IP rights that were being "diluted" without the knowledge of the client; inadequate information around patentability of key inventions; invention disclosure policies that resulted in dissipation of patent rights; agreements with customers or employees that placed IP ownership at risk, and so on. These and other risks to your IP can be avoided by undergoing the IP Audit.

Designing an IP Protection Strategy: The second phase is designing a tailored "IP Protection Strategy". Focus on a firm-wide, business minded strategy that furthers short and long-term business objectives. This is contrasted with the norm which is generally "knee-jerk" IP filings or responding to IP crises.

The IP Protection Strategy identifies specific action items with completion milestones to address the IP Risk Hot Points. An important component of the Strategy is doing relatively simple things now for avoiding complex and costly problems later.

Each IP Protection Strategy is different. They include items such as intellectual property filings, implementation of invention ownership agreements, firm-wide policies for maintaining secrecy of inventions, improvement of IP related agreements, strategies for enforcing IP rights against potential infringers.

Education programs on IP for personnel responsible for licensing, monitoring strategies for identifying potential infringers early on, procedures for ensuring that the IP Audit is kept up to date etc.

In addition, IP budgets require controls. Therefore, the IP Protection Strategy includes fixed quotes on specific action items where possible and creative solutions for cost deferral and minimization.

Anthony de Fazekas

From: Miller Thompson LLP Newsletter