Intellectual Property in Practice Flashcards

An engineer, employed by a large automotive company, invents a new and more efficient fuel injection system during their regular work hours using company resources. In the absence of a specific agreement stating otherwise, who is the presumptive owner of the patent rights for this invention in Canada?

Answer: The engineer, because the Patent Act defaults ownership to the inventor.

Unlike the Copyright Act, the Canadian Patent Act does not have a provision that automatically grants ownership to the employer. The default common law principle is that the inventor (the employee) owns their invention, even if created during the course of employment, unless there is an express or implied agreement to the contrary.

A geoscientist develops a proprietary method for analyzing seismic data that gives their consulting firm a significant competitive advantage. The firm takes steps to keep the methodology confidential, including using non-disclosure agreements with clients and employees. What type of intellectual property does this method represent?

Answer: A trade secret, because its value is derived from its confidentiality.

A trade secret is business information that has commercial value because it is kept confidential. The proprietary analysis method fits this definition as it provides a competitive edge and is protected by confidentiality measures. While potentially patentable, its current protection scheme is as a trade secret.

A company designs a new hand tool. The tool has a unique, visually appealing, and non-functional shape. The company also creates a distinct logo that is stamped onto the handle. To protect the tool's appearance and the logo, which two forms of intellectual property should the company primarily seek, respectively?

Answer: Industrial Design for the shape, Trademark for the logo

An industrial design protects the visual features of a finished article, such as its shape or ornamentation, that are not purely functional. A trademark is a sign, such as a logo or word, used to distinguish the goods or services of one person or organization from those of others.

An engineer invents a new type of biodegradable plastic. They publish their findings in a peer-reviewed journal on March 15, 2024. According to Canadian patent law, what is the absolute deadline for the engineer to file a patent application in Canada before the publication invalidates their right to a patent?

Answer: March 15, 2025

Canada provides a one-year grace period for patent applications. An inventor's own public disclosure of their invention will not prevent them from obtaining a patent, provided they file the patent application within one year of the disclosure date.

For an invention to be granted a patent in Canada, it must meet three fundamental statutory requirements. Which of the following lists these three criteria correctly?

Answer: It must be novel, useful, and non-obvious.

The Canadian Patent Act requires that an invention must be new (novel), functional and operative (useful), and show inventive ingenuity (be non-obvious to someone skilled in the art) to be patentable.

A professional engineer is retained by a law firm as an expert witness in a complex product liability case. What is the engineer's primary duty in this role?

Answer: To provide a fair, objective, and non-partisan opinion to the court.

The primary duty of an expert witness is to the court, not the party that retained them. They must provide an independent, objective, and unbiased opinion based on their expertise to assist the court in understanding the technical matters of the case.