Intellectual Property Protection

Jenna Doucet (2010).

Intellectual Property Protection

The Spiro-flex Industries v. Progressive Sealing Inc. case highlights some of the controversies involved in the protection of intellectual property. Unlike productions that are covered by the Copyright Act, industrial and utilitarian designs are protected only when registrants are in possession of patents (Yates, Bereznicki-Korol & Clarke, 2008). The case of Spiro-flex case is one in which an inventor, McLeod, entrusted his unpatented design (a pump coupler) and specifications to several manufacturers to produce and market his device. Several companies, including organizations McLeod had originally presented the opportunity to and those involved in the marketing brochures production made copies of the device. In this case the questions that beg to be answered are what possible actions could inventors, such as McLeod take in the event of perceived infringement? What are the arguments for those actions, if any? And what steps can an individual take to protect his or her interests?

The first question involves determining what actions McLeod can take as a result of the perceived violation. The first step would be to contact a lawyer with intellectual property expertise. The lawyer would then help McLeod decide which infringement, if any has taken place. McLeod would also have to decide on bringing the civil law case to court or to a summary procedure. Additionally, McLeod should inform the offending parties in a letter depicting what activities he believes are constitutes of infringement and what his intents are to bring the matters to court. In many cases matters can be resolved without the costly remedies of courts. If an agreement cannot be reached, McLeod could apply for an interlocutory injunction. The interlocutory injunction, while not permanent would prevent further damages before the trial. “ Often, the effect of the interim remedy is so devastating to the offender that no further action need be taken” (Yates, Bereznicki-Korol & Clarke, 2008, p.566).

To answer the second question one must consider the vast category of topics that fit into intellectual property to properly define which laws protect and apply to an inventor’s or creator’s work. The invention is in this case be classified as a utilitarian and functional object and thus is subject to patent law in order to be protected (Richards, 1990). “Patent protection arises upon registration” (Zimmerman, 2001, p. 351). Furthermore, the unpatented concept could be regarded as a ‘trade secret’, in which intellectual property is protected by confidentiality agreements. The parties that are involved have a duty to keep the secret safeguarded. There was no such confidentiality agreement made, thus McLeod could not seek action under this pretense. Furthermore, if third parties are able to reproduce the item than there is no protective recourse for the trade secret. It is noteworthy, however, to illustrate that there is overlapping between intellectual property laws. For example, McLeod’s literacy work, such as the pump’s specifications and drawings, are subject to copywrite law. McLeod could validly argue that the reproduction of the device from his literacy work is an infringement of the Copyright Act. Richard (1990) states, “ Even before the proclamation of the 1988 Act, Canadian lawyers had been able to convince the courts that the copyright subsisting in a plan or drawing could be infringed without the necessity of actually copying the said plan or drawing even if the plan or drawing depicted a functional or utilitarian object” (p. 2). It is likely that under this argument, McLeod’s case would be heard and ruled in his favor.

McLeod could have protected his interest by applying for a patent. The patent gives its holder a twenty-year monopoly for the exchange of the product’s disclosure. Obtaining a patent can be costly and complex. If McLeod was not able to obtain a patent on his own he could have applied for a joint patent with the manufacturing company that designed and produced the spring. McLeod could have used the copyright sign and patent pending in his original documents to warn off competitors. At the very least, McLeod could have established that his product was protected by trade secret law and had individuals who viewed the specifications sign a non-disclosure or compete document.

McLeod did not take the appropriate steps to protect his interest and is thus faced with an unfavorable situation. Although, several options exist for McLeod to amend his rights and he has a valid argument, there is no guarantee that the court will rule in his favor.

References

Richard, L. (1990). Copyright infringement and functional objects: effects of new

section 64 and 64.1 of the copyright act on interlocutory injunction

proceedings. Business and the Law. Publication 116.001. Retrieved March 2, 2010.

Yates, A., Bereznicki-Korol, T. & Clarke, T. (2008). Business law in Canada (8th ed).

Canada: Pearson Education Canada.

Zimmerman, G. (2001). Extending the monopoly? The risks and benefits of multiple
forms of intellectual property protection. Canadian intellectual property review.
Retrieved on March 2, 2010 from: www.ipic.ca/reviews/CIPR1720.pdf