Case Study Summaries

Intellectual Property Case Studies
(PDF - 416 KB - 2 pages)

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• Autopaint
• Samantha Chang
• Silver Communications
• Suki's Enterprises
• TeleCan Pharma
• WiTech

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Please note: This page contains case study summaries only. For more information, or to schedule a case study in your class, please email casestudies@ic.gc.ca.

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Autopaint

Target academic departments

Business, Engineering, Humanities, Social Sciences

Topics covered

• Trade-mark rights
• Domain name rights
• Exhaustion rights on sales of patented items
• Searching IP databases
• International IP regimes

A Canadian art dealer comes across a machine that can automatically paint canvases to appear human-made. The name of the machine is AutoPaint™. In order to attract business using the new machine, the art dealer registers the domain name www.autopaint.ca, as it had not been done previously . Eighteen months later, the Singapore-based machine vendor informs the art dealer that they have a registered trade-mark on AutoPaint™ and that it is patent protected. Additionally, their accompanying sales material clearly indicates that AutoPaint™ cannot be used to set up a business offering services.

Sample questions

• Can IP engage ethical issues?
• Who owns the IP rights in this case?
• What tests/evaluations are needed to determine patentability?

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Samantha Chang

Target academic departments

Science, Engineering

Topics covered:

• IP ownership rights for students
• Types of IP protection
• Non-disclosure
• Trade secrets
• Patent registration process

A summer student is working in a professor's lab. Her employee status is unclear. The professor allows the student to work in the lab and then pays her a small stipend per month out of a miscellaneous research account.

The professor works with industry in the process control field. The student comes up with and implements an idea for one of the process control projects. The idea is worth thousands of dollars to the client, an auto parts manufacturer. The client wants to file a patent on the idea.

Sample questions

• What rights does the student have regarding her idea?
• What policies are in place to cover this?
• How can the student get help with her situation?

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Silver Communications

Target academic departments

Engineering, Business, Science

Topics covered:

• Industrial design protection
• Trade-mark protection
• Patent protection

A Canadian telecommunications company is in the design phase of a new device that incorporates a cell phone, PDA, MP3 player, GPS chip and Internet capabilities. John Carpathian has recently been appointed the new leader of the device's development team. A senior lawyer leads the legal sub-group of the development team. Her job is to ensure that the company operates freely and that all new developments of the design are IP protected.

There is concern that John's team's new device may have a design similar to their competitor's product, for which an industrial design application has already been submitted.

Sample questions

• Can a company apply to register a design that isn't theirs?
• What is the difference between industrial design protection and a patent?

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Suki's Enterprises

Target academic departments

Engineering, Business

Topics covered

• Who owns the IP?
• Value of trade-marks and patents
• Types of IP
• Importance of trade secrets
• Disclosure
• Patentability of software or code

An SME in the computer software business was impressed while reviewing the work of one of the programmers. The programmer's work identified a new way of sorting database records that was twice as fast as traditional methods. The programmer, an employee, devised the idea while working on a client's project. The SME would like to know when questions regarding IP protection should be raised.

Sample questions

• What rights are there in the client contract?
• What IP regimes apply?
• What IP protection is available and should be secured?

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TeleCan Pharma

Target academic departments

Science, Business

Topics covered

• How to search IP databases
• What is considered a "new" discovery?
• How can a new discovery be protected?

A researcher in a pharmaceutical company with an M. Sc. has discovered a new molecule that appears to have significant efficacy in the treatment of a cancer known as melanoma (skin cancer).

The researcher knew from his graduate work that a class of drugs, with which they were working, was expected to have efficacy against another type of cancer cell; however, it was doubtful that it would work on melanomas. The researcher identified one molecule in the overall class of drugs that had unexpected efficacy on the lab bench on melanoma.

Upon further investigation, the researcher found that a patent was issued for the molecule in 1993, but it had since expired.

Sample questions

• What rights are there to seek patent protection on the molecule?
• How does the earlier patent affect the situation?

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WiTech

Target academic departments

Engineering, Science, Social Science, Humanities

Topics covered

• IP and ethics
• IP ownership
• Disclosure and p atents

WiTech is a Canadian company working in the field of wireless phones and PDAs. They are working on perfecting voice-over WiFi devices but have not created any "breakthrough inventions".

The R&D director is worried that senior management might think WiTech is lagging behind a small American company, known to be the only other company working in the same field.

In order to show management that WiTech is making progress, the R&D director obtains a patent in Canada and the United States. However, the patents probably should not have been issued because the R&D director knew that there were two serious problems: a) some of the work described as substantiating the patent had never been done; and b) the R&D director had purposely forgotten to disclose some prior art that he was aware of that would have likely blocked the patent.

Nine months later, senior management considers whether they should sue the small company in the United States on the patent. The R&D director is asked to give his opinion on the situation.

Sample questions:

• Can IP engage ethical issues?
• Who owns the IP?
• What tests are needed to determine patentability?
• What should the R&D director have done to protect the invention?