Moving Your Business Online Could Raise Copyright Issues

Canadians have made it through the first four weeks of social distancing and are now settling into new routines as much as possible. For many, that means turning to online resources for our business, social, entertainment, educational, and fitness needs.

In response to the COVID-19 pandemic, there is a proliferation of innovative online offerings that are enabling our businesses to continue operating, offering a sense of community, continuing education, or even just providing ways for busy parents to entertain their kids for a couple of hours. In a time of extreme isolation, the internet is bringing Canadians together and helping us to stay connected.

One thing that has not changed, however, is copyright law. Although the states of emergency declared across Canada and around the world are disrupting many things, the Copyright Act remains in force.

Developing new online services that attempt to replicate in-person interactions and transactions may trigger some unexpected copyright obligations.

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Concerned About Patent Deadlines During the COVID-19 Pandemic? The Canadian Intellectual Property Office Offers An FAQ Page

The rapidly evolving coronavirus pandemic continues to have a significant impact on intellectual property rights holders in Canada and around the world.  As noted in our most recent IP bulletin, the Canadian Intellectual Property Office (“CIPO”) recently announced that, due to the COVID-19 pandemic, March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020).

To assist those having or seeking patent rights in Canada, CIPO has now prepared a series of Frequently Asked Questions (“FAQs”) regarding the COVID-19 service interruptions and patent prosecution matters before CIPO. Information on service interruptions with respect to the Trademarks Opposition Board (“TMOB”) can be found here.

CIPO is careful to point out that the answers provided are only a guide and should not be considered legally binding.  CIPO recommends that everyone consult a registered patent agent who can advise on any specific situation.  Anyone concerned about Canadian patent prosecution deadlines should review all of the FAQs provided on the CIPO website and consult a Canadian patent agent as applicable.

To that end, Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

The Canadian Intellectual Property Office Extends Deadlines Until April 1st due to the Pandemic

The coronavirus pandemic is having a significant impact on our personal lives, our countries and our economies!  Canada’s Intellectual Property Office is no exception.  While the Canadian Intellectual Property Office (“CIPO”) currently remains open and in operation, significant delays in all CIPO services should be expected.  

More importantly, CIPO has, on account of the unforeseen circumstances resulting from COVID-19, recently announced that for now March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020).  CIPO has also indicated that, if the circumstances that led to this designation continues, CIPO may decide to extend the applicable time period.   CIPO’s decision coincides with fee, rule and procedural accommodations by other intellectual property offices, including the EU Intellectual Property Office and the United States Patent and Trademark Office.

Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance.  In the meantime, we will continue to keep you informed of any developments as they occur.

SUSSEX ROYAL Trademark in Canada: Safe Heaven, But Maybe Not for Royal Trademarks

The past two months have been marked by unprecedented turmoil for the British royal family, after the announcement by the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, that they would step down as senior members of the royal family and entertain their own financial independence. Under a new working arrangement, they will be free to earn professional income and will have more liberty to pursue their charitable endeavours. Further details on the specific arrangements can be found here.

In anticipation of their new projects, a trademark application and a domain name registration for SUSSEX ROYAL had been sought in the UK. Following a recent intervention by Her Majesty the Queen herself, however, the use of the term “royal” has now been disallowed. Since the Duke and Duchess of Sussex would no longer be serving as “royal” members and representatives, as they gave up their royal duties, then there was no justification for them to further use this term. The UK trademark application for SUSSEX ROYAL was thereby withdrawn.

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Key Estate Planning Considerations for Individuals with Intellectual Property (Part III: Patents)

This is the third and final entry in a three-part blog series about the interaction between estates law and intellectual property law. Part I introduced Ontario’s succession law regime, and provided an analysis of succession law vis-à-vis copyright law. Part II applied this analysis to trademark law. Finally, Part III will examine this area in relation to patent law, as well as provide some concluding thoughts and considerations.

Patents

In the previous two blog entries in this series, we have provided an overview of succession law in Ontario, and have applied its principles to the relevant provisions of copyright law and trademark law. This week, we conclude by taking this same approach to patent law; as you will see, patent legislation is in some ways more flexible and in other ways more restrictive than copyright or trademark legislation

A patent provides a time-limited, legally protected, exclusive right to prevent others from making, using and selling an invention. An invention can be a product, a composition (such as a chemical composition), a machine, a process, or an improvement upon any of these (with certain exceptions).

Unlike copyrights and trademarks, patents must be registered in order for their owners to exercise the rights associated with them. According to Subsection 27(1) of the Patent Act, only an inventor or their “legal representative” (which has a similar definition to that of the same term in the Copyright Act) may apply for a patent; thus, it may be possible for a testator’s executor to apply for a patent even after that testator’s death.

On that note, similar to copyrights, it is possible for an inventor’s employer to own a patent; however, the Patent Act does not have any provisions that explicitly state this. Instead, the common law establishes that there is a presumption that an employee will have ownership of their invention, and any resulting patent for discoveries made during the course of employment (See Comstock Canada v Electec Ltd (1991), [1991] FCJ No 987, 29 ACWS (3d) 257). In order to rebut this presumption, there must be an express agreement to the contrary, or the employee must have been hired for the express purpose of inventing or innovating. Therefore, in drafting their will with respect to patent rights, an individual should confirm with their contemplated executor that an employer does not have any potential claims to their patent rights.

Furthermore, with respect to assignments of patents via a will, Subsection 49(1) of the Patent Act allows for the transfer of a patent and/or the right to obtain a patent, in whole or in part. Thus, it would be prudent for an individual who does not apply for a patent for whatever reason while they are alive to inform their contemplated executors of their potential right to obtain said patent and should assign said right in their will. Furthermore, under Section 44 of the Patent Act, in a manner slightly different from copyrights and trademarks, the term of a patent is 20 years from the date that an application for said patent is filed. Thus, while a registered patent expires, the right to obtain a patent does not (subject to satisfying additional requirements for obtaining a patent, such as novelty, obviousness, utility and subject matter), and neither term correlates with the death of the inventor.

All of this suggests that if a testator created a new invention during the course of their life without patenting it, the beneficiaries who received the patent rights under the will (or the residuary beneficiaries if there was no specific patent-related provision in the will) could very well make a successful application for a patent and benefit from the rights of the patent over a 20-year period. The financial value of a patent could be significant, so individuals should definitely account for the potential value of the patent in determining how to distribute their estate. That being said, from a practical perspective it would be prudent for an inventor to apply for a patent while they are alive, as they would most likely be more familiar with key details necessary to complete the application than their beneficiaries would be.

Concluding Thoughts and Considerations

In making provisions for one’s intellectual property rights in their will, it is important to consider provisions related to both assignability and terms with respect to said intellectual property rights. For the former, the key federal statutes grant the ability for one to assign these rights through their will. For the latter, knowing when these rights expire is critical for determining how to manage them in an estate planning (as well as an overall financial planning) context, particularly because they may require continued attention and maintenance from an executor. In any event, it is clear that intellectual property is very much property for the purposes of will-making, and thus one should give any intellectual property that they may own just as much attention as any of their other key assets. Thus, it is essential for one to, prior to their death, keep their executors and trustees (and in many cases, their beneficiaries) in the loop about what intellectual property rights they do or may have.