‍Let’s Talk About… Intellectual Property (IP)

Talking about your invention, design, or clever solution can be tricky, especially if you want to respect the various rules related to IP laws. Use the checklist below to avoid putting your foot in your mouth when discussing IP.

Before You Have Protection

Thinking about discussing your own inventions or creations before you've filed for protection? Shh... Until you've officially filed for formal protection (such as a patent, industrial design, or trademark), it’s best to keep the related information secret. Both patent and industrial design rights need to be novel (i.e., first in the world) when examined by the government. While North American laws have some flexibility (e.g., a grace period for self-disclosure), other jurisdictions may not. 

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In Canada, there's no requirement to register a trademark, but if you plan to do so, it's a good idea to file first. This is because there's no "use requirement" for registering a trademark, meaning someone else could register the trademark before you and then try to sell or license it back to you (this is called trademark squatting).

Pending vs. Patented

Once you’ve applied for formal protection, the risk of damaging disclosure is reduced, but there are still things to keep in mind. For example, although a provisional patent application with the USPTO isn’t technically a patent, it allows you to use the term "Patent Pending" with the description of your invention. However, in both Canadian and U.S. law, it can be considered deceptive to use the term “patented” if the patent hasn't been granted and is not yet in force.

When You Have Formal IP Rights

There are situations where marking your products can be valuable. Marking helps deter an “innocent infringement” defense, which someone might use if they infringe on your patent, design, trademark, or copyright and claim they were unaware of your formal IP protection.
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This is why it’s important to:

• Give public notice of your granted patents by marking your product or its packaging. Connect with your IP professional to ensure proper patent marking, as it can be crucial for calculating damages in case of infringement.

• If you have a registered industrial design, print the capital letter "D" in a circle, along with the proprietor’s name, on the article or its label/packaging.

• In Canada, the use of ™ or ® after a trademark doesn't carry any legal effect, but in the U.S., ™ is used for unregistered trademarks, and ® is reserved for registered trademarks.

• In Canadian copyright law, displaying the copyright symbol is not mandatory, though it is in some other countries. A typical copyright notice includes the © symbol, the copyright holder’s name, and the year of first publication.

What About Talking About Others’ IP?

There may be times when you want to discuss others’ IP. For example, you may want to illustrate how your invention outperforms a competitor’s, or you might want to highlight the differences between your products. Before making these comparisons, it's important to consider the risks carefully.

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There are many laws your competitor can rely on to stop you from including their IP in for example a comparative advertising video or print material. For example, a competitor could claim trademark infringement if you reproduce their trademark in a video, on a webpage, or on packaging. Similarly, reproducing a competitor’s logo may be copyright infringement.

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Furthermore, competitors can take action against you for false or misleading advertising if you’re putting their IP and business in bad light. If they can prove they incurred a loss because of false advertising, the court may order you to pay damages.

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This is why it's crucial to get legal advice before making any comparisons. Ensure that your comparisons are truthful, factual, and substantiated by proper data (e.g., testing or surveys). Avoid using superlatives, criticizing competitors, and focus on comparing proven differences between similar products and features.