Intellectual Property (IP)

Introduction

What is Intellectual Property?

Intellectual property (IP) refers to a creation of the mind, including, but not limited to, inventions, literary and artistic works, designs, software, and trademarks. IP rights such as copyright, trademark, and patents are protected by law making them an asset and allowing the owner of IP to earn financial benefit from what they create. IP not only has economic value, but it also has the opportunity to contribute immense societal benefit.

Types of Intellectual Property?

Types of IP include:

  1. Copyright
    Copyright is a bundle of rights created by law that grant the creator of an original work exclusive rights for its use and distribution. These rights arise automatically upon creation, but can also be enhanced by formal registration. Examples of works that are protected by copyright include, but are not limited to, written works, articles, photographs, graphics, illustrations, and videos. These may be made available in print and/or electronic formats. In Canada, copyright protection lasts for the life of the creator plus 50 years.

  2. Trademarks & Official Marks
    A trademark is a word, phrase, symbol, or design (or a combination of these features) used to distinguish the goods or services of one person or organization from those of others in the marketplace. An official mark is an authorized mark used by universities, governments, and public authorities for goods and services. A mark must be in use to qualify as an official mark. Like copyright, a trademark exists by virtue of its use in relation to the goods or services being provided. Registration is not required, but registration shows legal evidence of creation and ownership and can be beneficial if enforcement is required. In Canada, trademark registration must be renewed every 10 years.

  3. Patents
    Patents cover new and useful inventions and may apply to newly developed technology as well as to improvements on existing products or processes. Patents provide a time-limited, legally protected, exclusive right to prohibit others from practicing an invention. In this way, patents serve as a reward for ingenuity. To be patentable, an invention must be new, novel, non-obvious, and eligible subject matter. A patent is granted in exchange for a full published description of the invention for others to learn from. Patents are generally valid for 20 years from the first date of filing.

  4. Industrial Designs
    Industrial designs protect how something looks. They protect a product’s unique appearance and not how it is made or how it works. In Canada, the Industrial Design Act confers to the registrant an exclusive right for the 3-D features of shape and configuration, as well as the 2-D features (such as pattern and ornament, including colour), applied to a finished product. In Canada, industrial designs get protection for 15 years from grant.

  5. Trade Secrets
    A trade secret is information of actual or potential value that, as the name implies, is not generally known and is maintained as secret, confidential information. Unlike other types of IP, there is no formal process for protecting a trade secret. In Canada, trade secret law is based in common law. Trade secrets are often relied upon when an invention has a short lifespan or is difficult to reverse engineer or copy. Trade secrets are also relied upon to protect valuable information when it cannot be protected by other means, such as patents or copyright. Trade secrets can remain protected indefinitely, as long as they remain secret.

  6. Breeder’s rights
    Breeder’s rights allow plant breeders to protect new varieties of plants, similar to the way an invention can be protected with a patent. Breeder’s rights give the holder an exclusive right over the sale, production, reproduction, import, export, stocking and conditioning of their plant variety's propagating material (e.g. seeds or cuttings). To be protected by Breeder’s rights, a plant variety must be new, distinct, uniform, and stable. In Canada, plant breeder’s rights last 20 years (25 years for trees or vines) from date of issue.

IP Considerations for Innovators

  1. Public disclosure
    Making a public disclosure (e.g., lecture, presentation, publication, etc.) could affect the patentability of your IP. Most countries will not allow you to get a patent if you have already made an enabling public disclosure. Canada and the US however, offer a “grace period” that allows inventors to file a patent application up to one-year after disclosure. It is recommended to seek legal advice before making any public disclosure.

    It is also recommended that you have a Non-Disclosure or Confidentiality Agreement in place with any potential partners before you disclose details of your invention.

  2. Inventorship
    An inventor on a patent is an individual who contributes intellectually to one of the claims of the invention. Someone who works under the direction of another and does not contribute original thought to a claimed invention is not an inventor, but acts more like a technician or as the “hands” of the inventor. Similarly, collaborators may not contribute to an invention being claimed if they are only providing feedback and not actual ideas and should not be named as inventors on a patent application. It is important to accurately list inventors to avoid rejection or invalidation of a patent or patent application.

  3. Ownership
    Inventorship and ownership are two separate concepts and one does not always match or reflect the other. While inventorship is tied to the individual that created the work, ownership can depend on legal agreements and policies in place at a given organization. Therefore, although the general rule is that an author, creator, or inventor typically owns the IP they create, this is not the case if the individual was under contract and the work was created during the course of their employment. Then, in the absence of an agreement with the employer that states otherwise, the owner is the employer. Ensure you know who owns IP developed within your organization.

    Similarly, under copyright law, an independent contractor may own their own copyright work. If you use third party developers to create an original work, including an application (App), make sure you have a contract in place to assign ownership of IP back to you or your company, otherwise you will not be able to fully exploit the work even if you paid for it.

    While a creator of a copyright work can assign ownership of their copyright to another party, they cannot assign their moral rights. Moral rights are rights to the integrity of the work; rights for the work not to be associated with a product or service; and rights to paternity (to be named or remain anonymous). These rights are granted exclusively to an author of a work and although they cannot be assigned, they can be waived.

    Many publishers will also claim ownership of published journal articles and papers. Carefully read the terms and conditions before submitting to a specific journal and know that sometimes you can negotiate these rights with a journal or choose a different journal that lets you keep your copyright.

  4. Multiple layers of protection
    Some products can be protected by a combination of rights. For example, a smart phone can be protected by patents for hardware and software, trademark for logos and names, copyright for code, industrial design for shape and look, and trade secrets for manufacturing know-how. Make sure you have considered all aspects of protection for your invention.

    Similarly, an App can be protected by trademark, copyright, patents, and industrial design. The name, logos, and slogans of an App can be protected under trademark. This protects your brand and distinguishes your product from similar Apps on the market. The source code, graphics, and scripts of an App can be protected under copyright. The process involved in the creation and functionality of the App can be protected by patents. Industrial design can protect the appearance of an App icon and its graphical-user interface.

  5. Costs & Timelines
    Although patents are one of the most known methods of protecting IP, not all inventions or creations need to be patented to be commercialized and not all inventions or creations meet the criteria for patenting. Patents are also expensive to file, get issued, and maintain. Typical costs to get an issued US patent is $30,000 plus annual maintenance fees. The timeline for obtaining a patent is typically 5 years leaving only 15 years of patent exclusivity. Patents are also granted on a national level and need to be applied for in every country you want protection for. Patent protection cannot cross borders. This makes worldwide patenting very expensive.

    Costs and timelines associated with patent protection are generally prohibitive for most App developers. Patents are also not particularly suited to the fast-evolving pace of software development. Industrial designs are significantly less expensive and generally take less than 2 years to be issued. While the protection provided by an industrial design is narrower than that provided by a utility patent, the scope is suitable for protecting certain elements of an App which can be significant to consumers and are often a key reason for the success of an App.

  6. Third Party Content & Open Source
    If you plan on commercializing a product that incorporates third party content, ensure you are aware of the license or terms of use of that content. Some open source material or free software will require you to make your copyright/source code available under the same terms. Others expressly prohibit commercialization. Some require a license for commercial use. Read all licenses and terms of use before using any open source material or free software when developing your own copyright work or Apps.

    You also cannot copyright any open source code in an App you create or any other content that is not your original work. Copyright on a derivative work only covers new material and it is necessary to disclaim the portions previously copyrighted when registering for copyright of the derivative work.

Specific Considerations for External Innovators working with AHS

  1. Make sure you own your IP, or have acquired all necessary rights, if you want to enter into a license agreement with AHS for your product. AHS will require you to indemnify AHS against any claim of third party infringement.

  2. If you are co-developing a product with AHS, then AHS’ IP Policy may apply. Please refer to the AHS Intellectual Property Policy Suite for more information. Further, AHS may expect certain licenses or rights in exchange for its contribution and assistance.

  3. If you have an innovation you would like to submit to AHS, please complete the Health Innovation Submission Form.

  4. If you have any questions relating to submission or assessment of your innovation, please contact innovation@ahs.ca.

Specific Considerations for Internal AHS Innovators

  1. Under AHS IP Policy, an IP creator shall report IP that is capable of being protected and of potential commercial value by completing an AHS IP Disclosure Form.

  2. Unless otherwise indicated in the AHS IP Policy, AHS is the initial owner of any IP developed by AHS staff or anyone using AHS resources and/or facilities. AHS may review requests to transfer the IP to the IP creators following review of the IP Disclosure Form. Please refer to the AHS Intellectual Property Policy Suite for more information.

  3. Upon receipt of an IP Disclosure Form, our Innovation, Evidence and Impact team will work with you and stakeholders to evaluate the technology and propose a path forward.

  4. In cases when there is an IP creator from another institution or organization, AHS may enter into affiliation agreements or other joint IP sharing agreements to establish ownership, a lead for commercialization, and revenue sharing.

  5. If you created an App using the EPIC App Orchard tools and API under AHS’ license (logged in using an AHS email), please note that the App cannot be used for commercial purposes. It can be used for internal, non-commercial AHS purposes only.

  6. If you have questions related to disclosing, protecting, or commercializing your invention, please contact innovation@ahs.ca.

  7. For more specific information on copyright works developed by AHS staff or using AHS resources, please refer to the AHS Copyright website on Insite and contact copyright@ahs.ca if you have any questions.