Intellectual Property 101

UM Policy on Intellectual Property: “Intellectual Property is the product of a cooperative relationship between the university and its members that is derived from the creative energies of the members fostered by the academic community and the university environment, including resources provided by the environment.”

The World Intellectual Property Office defines Intellectual Property (IP) as “creations of the mind, such as inventions, literary and artistic works, designs; symbols, names and images used in commerce”.

IP may be divided into five categories. This includes patents, trademarks, industrial design, copyright and trade secrets. All IP with the exception of trade secrets is country specific.

What is an Invention?
According to the Canadian Patent and Intellectual Property Office (CIPO), an invention is "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter."

An invention is something that is more than an idea or theorem. The act of inventing involves two stages:

• conception (the idea)
• a reduction to practice. To this end, all inventions must be supported by experimental data to demonstrate that the idea is at least “plausible” and/or validated.

For an invention to qualify for patent protection, an invention must be novel, not obvious and have utility. So what does that mean? Let’s take a look.

New or novel: The invention has to be different and distinguishable from anything that is publicly known or available. The invention would not be considered new or novel if it had been previously patented, or if a similar invention is already in public use or if the invention has been publicly disclosed.

Not obvious: The invention cannot be an obvious or be an extension of another existing invention, as determined by a person “with ordinary skill in the art at the time of the invention.”

Utility: an invention is “useful” if it provides some identifiable benefit and is capable of use.
 

The term “inventors” refers to people who have created an invention.
Inventors at the UM might include:

• UM undergrad and graduate students
• UM researchers, associate professors, professors, research associates, postdocs
• UM technicians
• Post-secondary institution researchers in Manitoba

Inventorship is different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.  

An invention may have more than one inventor. However, each inventor should have made an intellectual contribution, independently, to at least one element of a claim in the patent. While the contributions of the co-inventors may not have been equal, it is important to name inventors correctly on a patent, as improper naming of inventors can be grounds for rendering the patent unenforceable.
 

A patent is an exclusive right granted for an invention. It provides protection against others making, using, or selling your invention. Protection is granted for a limited period of time, generally twenty (20) years.

A trademark is a distinctive sign that identifies certain products or services produced or manufactured by an individual or a company. It serves to protect a unique combination of words, designs, or both that identify specific goods or services. The period of protection varies, but a trademark can be renewed indefinitely.

An industrial design refers to the aesthetic aspects or ornamental design. It provides protection of visual features such as the shape or surface of an article, or provides protection for unique product design features; including patterns, color or lines. An industrial design is primarily of an aesthetic nature, and any technical features of the article are not protected by the design registration. The term of protection is generally five (5) years, with the possibility of further renewal for a period of up to fifteen (15) years.

Copyright laws grant artists, authors and other creators protection for their literary works and artistic creations. In general, the right holder(s) of a “work” can authorize or prohibit its reproduction, its public performance, broadcasting, translation into other languages and its adaption. The economic rights relating to copyright are of limited duration, beginning with the creation of the work, and lasting for not less than fifty (50) years after the creator’s death. Moral rights, and the right to oppose changes to the work last for generally the life of author plus seventy (70) years. Moral rights ensure the author’s creation are fully preserved and recognize the unique connection to their work. Moral rights are also necessary to protect the author’s reputation in the situation where the works that they created are altered without permission.

Trade secrets include information derived from secrecy that is valuable to a business. In Canada, there is no formal intellectual property process to protect a trade secret, but they can potentially last forever provided the information actually remains a secret. Generally, trade secrets are used to: (i) ensure an invention or design is not disclosed to the public prior to seeking IP protection, (ii) to protect an invention without patent protection, (iii) protect business information that cannot be protected through other IP rights.

Any public display or disclosure of the results or process of the invention compromises its ability to be protected. We encourage our researchers contact our office if they may have created an invention with commercial potential and to maintain confidentiality of the invention until patent protection is applied for. Forms of public disclosure include publications, conference presentations, abstracts or posters, thesis presentations, press releases, or other forms of public communication. 

As an academic and educational institution, we recognize the need for UM researchers to publish their research results in a timely manner. Seeking patent protection does not generally delay publication of research results. We are committed to working with patent attorneys to accommodate publication dates. However, our office strongly recommends that each invention be submitted as an Invention Disclosure at least three months in advance of public disclosure to allow enough time to review the discovery and to work with an external patent attorney to draft the patent application.  A good time to disclose to our office is when the first draft of the anticipated paper is being drafted.