Intellectual Property in Practice Flashcards

An engineer develops an invention jointly with a colleague. Neither engineer has an employment agreement addressing IP ownership. Under the Canadian Patent Act, who owns the patent?

Answer: Both engineers jointly, as co-inventors, share equal undivided interests in the patent

Under the Patent Act, joint inventors each hold an equal undivided interest in the patent, absent a written agreement providing otherwise. Each co-owner may work the invention without accounting to the other.

Which of the following engineering outputs is protected by copyright in Canada?

Answer: Technical drawings and engineering reports prepared by an engineer

Copyright protects original expression — technical drawings and written reports are copyrightable. Mathematical formulas, functional designs, and standard processes are not copyrightable (they may be patentable or trade-secret-protected).

What is the purpose of a 'freedom-to-operate' (FTO) analysis in engineering project planning?

Answer: To assess whether a new engineering design infringes any valid third-party patents before commercialisation

A freedom-to-operate analysis reviews existing patents to determine whether a proposed engineering design, process, or product would infringe any valid third-party patents in the relevant markets.

Under Canadian law, what is the effect of an engineer disclosing their invention at a public conference before filing a patent application?

Answer: The invention loses novelty if more than 12 months have passed since the disclosure before the Canadian patent application is filed

Canada provides a 12-month grace period: a patent application must be filed within 12 months of the inventor's own public disclosure, otherwise the disclosure becomes prior art that destroys novelty.

An engineering firm's client contract includes a clause assigning all IP created in the course of the engagement to the client. The engagement results in a patentable invention by one of the firm's engineers. What is the effect of the assignment clause?

Answer: Valid — the client acquires ownership of the patent rights if the assignment clause covers the invention and is supported by consideration (the contract fee)

IP assignment clauses in commercial contracts are valid in Canada and can transfer patent rights from the inventor (or their employer) to the client, provided the clause covers the subject matter and the contract is supported by consideration.

A competitor reverse engineers an engineer's product to understand how it works and then manufactures a competing product using that knowledge, without accessing any trade secrets. Which statement best describes the legal position?

Answer: If the product was not patented, reverse engineering and subsequent manufacture are generally lawful in Canada

In Canada, reverse engineering of a publicly available product is generally lawful absent a valid patent or a misappropriation of trade secrets. Without patent protection, the functional design is available to the public.