I am extremely grateful for the 10 short weeks I got to spend (virtually) at ventureLAB. ventureLAB is not-for-profit technology hub in 91ŃÇÉŤ Region which is not only an amazing resource for tech companies, but also an amazing place to work.

ventureLAB works with start-ups from the early to late stages of a company. As a result, I got a front-row seat to the world of high-tech start-ups. This was an amazing opportunity since the IP realities of start-ups are quite different than the IP we learn from a textbook, or even the IP experienced from a law firm perspective.

Having been a scientist prior to law school, I will admit I was a bit nervous stepping into the world of high-tech. I quickly learned there was nothing to fear, and my experience as a scientist actually turned out to be useful! From day one I was part of team RIVIR (Relentless, Inclusive, Visionary, Innovative, Results oriented), and fortunately not the only one who wasn’t a tech-expert.

One of the highlights was the opportunity to talk with clients. This allowed me to gain a better understanding of the IP needs and concerns facing start-ups. I quickly realized that there is no one-size-fits-all solution for start-ups. Each start-up is unique, and what works for one company may not work for another. As ventureLAB works with hardware and software companies, the IP concerns were quite intricate and varied with the company stage. Each client call was different, meaning we got to cover a wide range of IP concerns, from both the business and legal perspective.

Most of my work was focused on creating information for both clients and the ventureLAB team. One of my biggest projects was creating two IP blog series. The first series, which extended on the work of last year’s student, was an IP 101 series that provided clients with an overview of IP, including determining what IP they have and how they can protect it. I then created a second “Deep Dive” series. This provided more in-depth information on each type of IP, so that clients can become better versed in the area(s) they are looking to obtain protection. Not only did this prove to be a great resource for clients and staff, but it also helped me brush up on my IP knowledge.

Working at ventureLAB highlighted that IP for start-ups is not as simple as just filing for a patent or trademark. There are a lot of considerations, not only the cost of obtaining IP but the cost of maintaining and enforcing your IP rights. A patent is expensive to obtain, but if you can’t afford to enforce your patent rights against infringers what is the point of having the patent? It is these types of considerations that are easy to overlook in the purely academic IP bubble. Learning about patents, it’s easy to think you come up with an innovative product, don’t disclose, apply for a patent and then you
prevent others from using it. In practice, that is much easier said than done.

Although IP is important, ventureLAB is much more than an IP factory. There are so many wonderful, hardworking people on team RIVIR. In fact, I often had a hard time keeping track of who does what since everyone is so collaborative and happy to jump on a call just to learn something new. This is a testament to the RIVIR culture at ventureLAB, where everyone is willing to help and support one another. It’s no surprise they were named one of the Best Workplaces in Technology. Outside my IP bubble I had the opportunity to learn a lot, from the internal hardware series where we could just learn about cool technologies, like drones or lasers, to being a fly on the wall in client programs. Even my weekly meetings with my supervisor were an enjoyable event. I had the opportunity to ask questions, pitch ideas or some days we just chatted about interesting topics in IP.

Overall, I highly recommend ventureLAB to anyone looking for a great place to work and learn. I certainly hope I have the opportunity to work with team RIVIR again in the future.

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Trademarks are an excellent way to protect your brand. Unlike patents or copyrights which protect specific products or works, a trademark distinguishes your company from others. It protects the goodwill and reputation of your business. The important thing to remember with trademarks is that they must always function to identify your company as the source of the goods or services. Your company name, the names of your products etc. do not protect the goods themselves, but rather they protect your brand. For example, the word LEGO and the LEGO logo function as trademarks because they identify the brand. However, the LEGO bricks themselves are not trademarked.

Trademarks come in a variety of forms. For instance, you may want to register the distinctive part of your company name (i.e. Apple is the trademark not Apple Inc.), a tag line or a logo. While these are the most common and obvious types of trademarks, you can also register colours, shapes, holograms, moving images, modes of packaging, sounds, scents and tastes. For example, the distinctive smell of is a registered scent mark, described as “a unique scent of pungent, aldehydic fragrance combined with the faint scent of hydrocarbon wax and an earthy clay”.

Unregistered vs Registered Trademarks

To some extent trademarks can be protected without registration. This is known as common law protection, which offers a limited scope of protection compared to a registered mark.

An unregistered trademark can be identified using the symbol. This is optional but it puts the public on notice that you are intending that word, phrase, or design to function as a trademark. However, if you were to attempt to bring a competitor to court over their unauthorized use of your unregistered trademark, you may be in for a lengthy and expensive battle. Unregistered trademarks are protected only in the limited geographic region that they are used. This means that if your company only operates in Toronto and the mark is only known in Toronto, you likely won’t be able to enforce your trademark against a competitor in Vancouver. This is because your goodwill may be limited to Toronto, so consumers in Vancouver are unlikely to mistake the competitor’s product for yours.

If a competitor is using your mark (or a confusingly similar mark), you cannot sue for trademark infringement. Rather, under common law this is known as “passing off”. This can be a difficult thing to prove, since you need to demonstrate that the trademark is associated with the reputation of your business, that the public was confused by the marks and that you suffered damage as a result. This often requires you to undertake surveys and to provide financial evidence of lost profits in order to support your claim.

In contrast, a registered trademark is much easier to enforce (albeit all litigation is costly). A registered mark can be identified using the ÂŽ symbol, but again this is not legally necessary. The rights of a registered trademark are national, meaning even if you only operate in Toronto, you would be able to prevent someone else (for the same class of goods or services) from using the same mark in Vancouver. This would also give you the ability to stop someone using a confusing similar mark in the same line of business or in a confusingly similar business.

Although a registered trademark is easier to enforce, unregistered trademarks can still be beneficial, especially in the early stages of a company where money may be tight. They allow you to build your brand and establish your distinctiveness in the marketplace, which is sometimes necessary to the success of your trademark application. Since Canada (as well as the US) is a first-to-use system, as soon as you start using your trademark (even if unregistered) you begin to acquire rights. This means if someone else wants to register your trademark you can oppose them on the basis that you were using it first. Using an unregistered trademark can also help build the distinctiveness of the mark, which can be beneficial for certain types of descriptive marks, which will be discussed below. That said, if you have a distinctive mark and the means to protect it, registration is the strongest form of protection.

What can be a Trademark?

Not everything is eligible for trademark protection. A trademark needs to identify your company as the source and also has to be distinctive. This means it needs to identify your company and ´Ç˛Ôąô˛âĚýyour company. It cannot be a word that identifies the broad class of goods or services in which you operate, as that would not identify your company specifically. There is a spectrum of distinctiveness when it comes to the registrability of trademarks:

A generic mark is not eligible for trademark protection. This means that this name has become the name the public uses broadly to identify the goods or services and no longer identifies the brand. For example, escalator used to be a trademark, but is now generically used to identify all types of moving staircases. Often, genericization is something that happens to existing marks, and is not often an issue for registration of new marks.

Descriptive marks are also not considered registrable. A descriptive mark is something that describes the quality, character or function of the goods or services. For example, American Airlines is a descriptive mark. It does in fact describe an American-branded airline company.

However, all hope is not lost for descriptive marks, and this is where the use of an unregistered trademark can save the day. A descriptive mark can become registrable if it comes to identify your company as the source, meaning it acquires distinctiveness through use over time. American Airlines was able to register its name as a trademark as the name became distinctive through use and consumers associated it with the company.

A suggestive mark sits right in the middle of the trademark registrability scale. These types of marks are generally registrable as they only hint at the type of goods or services rather than describing them outright. For example, Airbnb is a suggestive trademark. It doesn’t outright describe an online vacation rental business, but the inclusion of “bnb” alludes to a bed and breakfast. However, the complete trademark “Airbnb” does not directly describe vacation rentals, or bed and breakfasts for that matter. As such, it is a step above a merely descriptive mark and is thus considered registrable.

Arbitrary marks are the next strongest on the trademark registrability scale. These types of marks use common, but unrelated, words to describe their business. For example, “Apple” for computers, “Dove” for soap, or “Blackberry” for smartphones. All these marks rely on words that already existed in the English language. However, these words have nothing to do with the goods or services of the company. There is no natural association made between the word and the product. The association arises because the mark is distinctive of the source due to the efforts of the company. For instance, it is only due to Apple’s strong branding that consumers associate the word apple with computers.

Finally, fanciful marks are the strongest type of trademark. These are entirely made-up words that a company uses to identify itself. Lululemon is an excellent example of a successful brand using a fanciful mark. Lululemon has no other meaning, other than the association with exercise wear. These marks are the easiest to register (so long as they are not confusingly similar with an already registered or well-known mark) and afforded the highest level of protection. Since the word has no other meaning, there is no reason that anyone else should have a need to use the mark. The word is completely distinctive of your company.

Registering your trademark

Use is essential to maintaining a trademark. In Canada and the United States, you can apply to register a trademark before you have used it. In Canada, the catch is you must begin using your trademark within 3 years, or your mark risks being removed from the register. As such, if you haven’t started using your mark but you plan to, it can be a good idea to file to establish your date, and then begin use later.

The process is slightly different in the United States. The first difference is that there is state and federal trademark protection. You can register your mark in individual states, but this protection applies only to those individual states. Federal registration provides nation-wide protection of your trademark. Second, the US has a different use requirement for filing - you must have “use in commerce” or “intent to use”. Use in commerce means actual use across state lines (to qualify for federal protection). Intent to use allows you to apply for protection either before you’ve started to use your mark, or if you’ve only used it in one state. However, you’ll need to be able to demonstrate use at the time the office is ready to register your mark.

Similar to the PCT for patents, you can file an international trademark application, though there is no such thing as an international trademark. You can use the Madrid Protocol to file a single application which can then be used as a basis to file in multiple member countries (this includes Canada and the US). However, unlike with the PCT system for patents, you need to file an initial trademark application in your home country before you can take advantage of the Madrid Protocol to file in other countries of interest.

Once your mark is registered, so long as it continues to be distinctive of your company and you continue to use it and pay the renewal fees, you can keep your trademark indefinitely.

Protecting your trademark

Although a trademark can be renewed multiple times, if you fail to use and monitor your mark you risk losing it. You need to make sure your trademark remains distinctive of your company. To do so it is up to you to monitor and enforce your mark. If competitors begin to use your trademark or a similarly confusing mark this can dilute your trademark. Dilution is never good news for trademarks because it can harm your brand. For example, if another company uses your trademark on knock-off products, or to market their own goods, this can confuse consumers. If you allow the confusion to go on for a long time it can be very difficult to later enforce your trademark in the courtroom. A mark that is no longer distinctive can be at risk of being expunged from the register.

As such, it is good practice to routinely monitor your trademark. You can do a simple Google search to see what comes up for your trademark. Also consider common misspellings of your trademark for potential confusing marks. Alternatively, a trademark agent or lawyer can set up regular searches and notify you of any potential trademark infringement and advise you on how to proceed.

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This article was written in affiliation with Madelaine’s placement at ventureLAB and .

This series provides an in-depth look at different types of intellectual property. As a founder, once you’ve determined what types of Intellectual Property (IP) you need to protect, it’s important to understand the details and requirements of each. A concrete understanding of each type of IP not only allows you to recognize what you may be able to protect, but will also help you to take full advantage of the right. 

‍This article is the second in a 5-part series. ventureLAB’s experts cover everything you need to know when filing for IP protection. Over the next six weeks, we’ll release articles on the following topics.  to be the first to know when we release an article. 

• Part 2: A Beginner’s Guide to Patenting Software and Artificial Intelligence
• Part 3: Use It or Lose It: How to Acquire and Protect your Trademarks
• Part 4: Don’t You Forget About Me: Protecting Your Company’s Copyrights 
• Part 5: The IP Hidden Gems: Trade Secrets and Industrial Designs

Patenting software, and inventions related to Artificial Intelligence (AI) and machine learning, known as computer-implemented inventions (CII) in patent lingo, is a complicated and evolving area. The difficulty lies in overcoming Patent Office objections related to subject matter eligibility, which prohibits the patenting of abstract concepts and mathematical formulae (for more on this, see ).Ěý

CII, such as algorithms, are frequently deemed an abstract idea, and thus not suitable for patent protection. In order to overcome this obstacle the patent application must explain how the algorithm and the computer are interconnected such that together they form a single invention. To do this, the computer must be deemed an essential element of the invention.

This has been a historically tumultuous area of patent law. The 1981 Canadian Schlumberger case was the first to set out the rule that the use of a computer merely to automate calculations that could otherwise be done by hand is not patentable. This is because the inventive aspect is the calculation itself, not the combination of the calculation and computer. In 2011,  was successful in obtaining a patent on their ‘one-click’ method. This was a controversial decision since not only was it a CII, but it was also considered to be a “business method”, which is notoriously difficult to patent in Canada.

Most recently, in 2020 the Canadian Federal Court decided the case , which initiated a huge change in the way the patent office evaluates the essential elements that make up an invention. This resulted in the Canadian Intellectual Property Office releasing  on how patent examiners should approach patentable subject matter, particularly for CII. 

Before this decision, patenting was particularly difficult for CII because patent examiners would frequently determine the computer itself was not an essential element of the invention. As a result, what remained was an abstract idea (i.e. the software or algorithm itself) which had no physical substance and was thus deemed unpatentable. 

Now, all elements of an invention are presumed to be essential. Thus, if you include a computer in the claims, it will be assessed as if that computer is essential to the functioning of the invention. This is great news for inventors, since it reduces the likelihood that your CII will be automatically deemed unpatentable. 

Unfortunately, the challenges do not stop here. Having a computer viewed as an essential element of the invention is only the first step in patenting software. Next the patent examiner will look at whether the computer works together with the other essential elements of the invention. Together, the computer and the other elements must form an actual invention that has physicality. This physicality can be physical existence, or the invention can produce a physical effect or change.

The mere use of a computer in a well-known manner, such as to execute the code, will not be sufficient to render the invention patentable. This is because any computer could do that job, and the computer is simply a means to execute the algorithm, which on its own is an abstract theorem or disembodied idea. However, if in processing the algorithm the function of the computer itself is improved, this could be considered a physical effect and thus a unified invention.

In the US the test for patentability is different, but ultimately the outcome is similar. You cannot obtain a patent on a purely abstract idea and merely using a computer in a generic way will not be enough to overcome this hurdle. 

In Europe, the patent office takes a slightly different approach. It is relatively easy to overcome the subject matter barrier as the “any hardware” approach means that simply including a computer in the claim is a first step towards satisfying patentability. However, the patent office also requires a technological solution to a technological problem, which looks only at the technical features that contribute to the solution. Unlike Canada which now presumes most, if not all, elements are essential, a non-technical feature which doesn’t interact with the technical subject matter is essentially ignored. 

Patenting software is a very challenging field. The summary above is a very basic introduction to the field. It is best to seek the advice of a patent professional who can advise on the specific needs of your invention and adapt it for each jurisdiction. A patent professional will consider how your invention integrates the use of a computer, and how the computer and algorithm cooperate to produce a physical effect.

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