NPPE Intellectual Property in Practice 2 — Questions and Answers
Question 1: Which form of intellectual property protection is most appropriate for a novel engineering device that achieves a specific technical function?
- Copyright
- Trademark
- Patent (Correct answer)
- Trade secret
Correct answer: Patent
Patents protect new, useful, and non-obvious inventions, including novel engineering devices and processes. Copyright protects expression (not function), and trademarks protect brand identifiers.
The Patent Act, RSC 1985, c P-4 grants a 20-year exclusive right to make, use, and sell a patented invention in exchange for full public disclosure of the invention. To be patentable, an invention must be: (1) novel (not previously disclosed), (2) useful (has practical application), and (3) non-obvious (not self-evident to a person skilled in the art). Engineering devices, machines, processes, and compositions of matter are patentable subject matter. Copyright (which protects drawings and technical manuals as expression) does not prevent a competitor from making the same device described in those drawings — patent protection is required to prevent copying of the technical function.
Question 2: An engineer develops a software algorithm for structural analysis during working hours using company resources. Who is likely the first owner of the copyright in the software?
- The engineer personally, as the creator
- The employer, under the work-made-for-hire doctrine in the Copyright Act (Correct answer)
- The client for whom the analysis was performed
- There is no copyright in software algorithms
Correct answer: The employer, under the work-made-for-hire doctrine in the Copyright Act
Under s. 13(3) of the Canadian Copyright Act, where a work is made by an author in the course of their employment under a contract of service, the employer is the first owner of copyright, absent a contrary agreement.
The Canadian Copyright Act s. 13(3) provides that where a work is made by an author in the course of employment under a contract of service or apprenticeship, the employer is the first owner of copyright absent any agreement to the contrary. This applies to software, reports, drawings, and other copyrightable works created by employees during employment. Engineers who create software, designs, or technical works at work using employer resources should be aware that copyright typically belongs to the employer, not to them personally, unless their employment contract provides otherwise. Note: algorithms themselves are not copyrightable, but the code implementing them is.
Question 3: A Canadian engineering firm uses a confidential process that gives it a competitive advantage. The firm has not patented it. Which IP protection is available?
- No protection is available once a patent is not filed
- Trade secret protection, which requires reasonable efforts to maintain confidentiality (Correct answer)
- Automatic copyright protection
- Trademark protection
Correct answer: Trade secret protection, which requires reasonable efforts to maintain confidentiality
Trade secret law protects confidential business information that provides a competitive advantage. Unlike patents, trade secrets do not require registration but depend on the owner taking reasonable steps to maintain confidentiality.
Trade secret protection in Canada is governed by common law (and in some provinces, by legislation). A trade secret may be a formula, process, method, design, or compilation of information that: (1) is not generally known in the industry, (2) provides a competitive advantage, and (3) is subject to reasonable efforts to maintain secrecy (NDAs, restricted access, employee confidentiality agreements). Unlike patents, there is no registration system — protection arises from the secrecy itself. If the secret is independently discovered by a competitor, trade secret law does not prevent its use. If it is misappropriated (e.g., by a departing employee), the owner can seek injunctions and damages.
Question 4: An engineering consulting firm delivers design drawings to a client. Who owns the copyright in those drawings, absent any contract provision?
- The client, as the party who paid for them
- The engineering firm, as the author of the drawings (Correct answer)
- The provincial engineering regulator
- Copyright is automatically shared equally between firm and client
Correct answer: The engineering firm, as the author of the drawings
Under the Copyright Act, the author (the engineering firm or its employee-engineers) is the first owner of copyright in the drawings, regardless of who commissioned or paid for them, absent a written assignment of copyright.
In Canadian copyright law, the general rule is that the author is the first owner of copyright. Commissioning a work and paying for it does not transfer copyright — that requires a written agreement. In the absence of a copyright assignment clause in the engineering services contract, the engineering firm retains copyright in the drawings it creates. Clients typically have an implied licence to use the drawings for the purpose for which they were commissioned (e.g., to construct the project), but the firm may use the drawings for portfolio, reference, or other purposes. NPPE candidates should understand that copyright assignment requires explicit contractual language, and engineering service agreements should address ownership of deliverables.
Question 5: Which of the following best describes 'fair dealing' in Canadian copyright law as it might apply to an engineer reviewing technical literature?
- The right to reproduce any published technical paper in full for commercial purposes
- A user's right to reproduce copyrighted material for purposes such as research, private study, education, parody, satire, or criticism without requiring permission (Correct answer)
- An exemption available only to educational institutions
- A defence only available in criminal copyright proceedings
Correct answer: A user's right to reproduce copyrighted material for purposes such as research, private study, education, parody, satire, or criticism without requiring permission
Fair dealing under the Copyright Act allows users to reproduce copyrighted material for specific permitted purposes, including research and private study, without the copyright owner's permission, provided the dealing is 'fair.'
Sections 29-29.2 of the Canadian Copyright Act codify fair dealing, which allows reproduction or use of copyrighted material for: research, private study, education, parody, satire, criticism, review, and news reporting (with source credit for some purposes). Whether a dealing is 'fair' depends on factors including: the purpose, the character of the dealing (e.g., distribution vs. personal use), the amount copied, the nature of the work, available alternatives, and the effect on the market. The Supreme Court of Canada in CCH Canadian Ltd v Law Society of Upper Canada [2004] 1 SCR 339 held fair dealing is a user's right to be interpreted broadly. Engineers can use fair dealing to photocopy journal articles for personal research.
Question 6: A patent application in Canada is examined by the Canadian Intellectual Property Office (CIPO). During examination, the examiner finds a prior art reference that anticipates the claimed invention. What does 'anticipation' mean in patent law?
- The invention was expected or foreseeable by experts in the field
- A single prior art disclosure previously made all the essential elements of the claimed invention available to the public (Correct answer)
- Multiple prior art references together teach the invention
- The invention was developed by anticipating market needs
Correct answer: A single prior art disclosure previously made all the essential elements of the claimed invention available to the public
Anticipation requires that a single prior art reference disclosed all essential elements of the claimed invention before the patent's claim date. If any essential element is missing from the prior disclosure, there is no anticipation.
Under Canadian patent law (Patent Act, s. 28.2), an invention is not novel if it was disclosed by a single prior art reference that disclosed all essential elements of the claimed invention in a manner that would enable a person skilled in the art to practise the invention. This is anticipation. If the examiner can only reach the prior art elements by combining two or more references, that is obviousness (lack of inventive step), not anticipation. Engineers involved in patent prosecution or freedom-to-operate analyses must understand the distinction between anticipation (single reference, novelty) and obviousness (multiple references, inventive step).
NPPE Intellectual Property in Practice 2
Which form of intellectual property protection is most appropriate for a novel engineering device that achieves a specific technical function?