A regular patent application requires carefully and thoroughly drafting a patent specification and claims, and is best prepared with the assistance of a patent agent. A provisional patent application can be either a fully drafted patent application, a partially developed patent application, or in exceptional circumstances, any written document, such as a journal article, white paper, technical specification, or presentation.

Applicants may take up to one year after filing a provisional patent application to file a regular patent application claiming priority from and the earlier filing date of the provisional. Many applicants use the one-year period to defer the cost of preparing and filing a regular patent application, and to further develop their invention since it is not possible to add new matter to a regular patent application after it has been filed. However, many applicants may be unaware of potential pitfalls associated with filing something less than a fully drafted patent application as a provisional application. This article explains some of these risks, although there are numerous other risks not described here.

Insufficient Disclosure

Any features claimed in a patent application claiming priority to a provisional patent application must be fully disclosed in and supported by the provisional application to benefit from the filing date of the provisional application. To be disclosed, the features claimed in the later application must at least be described in the provisional application, either literally or implicitly. How far implicit disclosure can extend varies by jurisdiction, but it is far safer to have literal disclosure in the provisional application for anything in the later filed applications. To be supported, among other things, the features described in the provisional application must also be fully enabled. For example, a claim to a “flying car” will not be supported by literally reciting a flying car in the provisional application: disclosure must be made of specific apparatus that can cause a car to fly, and even then allowable claims would likely be limited to the specific apparatus actually invented and not the vague concept of a flying car.

When filing something less than a fully drafted patent application as a provisional application, and especially when including journal articles, white papers, and/or presentations, details can be omitted which are required to support features claimed in later filed applications. If features claimed in later filed applications are not supported by the provisional application, those features will not benefit from the earlier filing date of the provisional application. This can be particularly problematic where inventors publically disclose their invention based on the false assumption that the provisional application they filed supports the invention, with patent protection becoming unavailable in many countries if a priority claim to the provisional application cannot be maintained.

Over Disclosures and Admissions

A provisional patent application which is less than a fully drafted patent application may also potentially disclose more than the applicant intends, or make admissions prejudicial to the applicant. Over-disclosures occur when the provisional application describes inventions beyond the invention to which the applicant intended to direct the patent application. The provisional application becomes publicly available upon the publication of a subsequent application claiming priority to the provisional, meaning that those inventions will become publically disclosed, potentially barring the inventor from pursing those other inventions in separate patent applications.

Problematic admissions can also occur when a provisional application describes features as known in the field or common general knowledge, therefore admitting those features are prior art. Any prior art admissions by the applicant can be cited against the application during prosecution. It is also common in journal articles to comment on the degree to which there are uncertainties in experimental results, or the degree to which further experiments are necessary to verify certain findings. Such statements may be used by a patent examiner as an admission that the invention was not enabled when the provisional application was filed. The nature of journal articles, white papers, and presentations is very different than a patent application, and the type of language customarily used in these documents can be ill-suited for a patent application. As such, it is easy for these documents to contain language prejudicial to an applicant if included in a patent application, even while such language may seem otherwise appropriate for the original purpose of these documents.

Conclusion

A provisional patent application may allow an applicant to secure an earlier filing date, defer costs and provide time within which to refine their invention. However, an improperly drafted provisional application may undermine later filed applications, defeating the ability to obtain valid patent rights. The decision of when to file a provisional application and what to file as a provisional application should be thoroughly considered, and ideally made with the same level of diligence as a regular patent application and in consultation with a patent agent.

February marked my third anniversary on the Iditarod Trail. The Iditarod Trail Invitational (“ITI”) is a self-supported, winter ultra-endurance race that attracts a particular type of athlete – one comfortable in solitude and with the unique risks that isolation brings when the temperature routinely plunges below -20^oC and the wind howls.  The trail is desolate. Racers can travel days without encountering another soul, which presents a rare chance to really slow down. 

Back home, it’s difficult to find a few moments to take it a little slower. The mind whizzes through daily chores and difficult work.  As a result, we get stressed.  When stressed, the stress hormones adrenaline and cortisol are released.  These hormones regulate a wide range of processes throughout the body, including metabolism and the immune response.  During periods of stress, these systems shut down making it common to lose or increase appetite or to become ill.  Our ability for rational, systematic thought is also impaired.  Accordingly, the faster we move through high stress situations, the less carefully we are able to reflect on things and mistakes can occur. This is why slowing down is so important.

The beauty in the type of slowing down that comes from events like the ITI is that there isn’t time to question or doubt doing it. There isn’t any guilt attached to it, or any feeling that the time “should” be spent doing something more productive. The mind is fully engaged with putting one foot in front of the other, one very slow mile at a time. Besides thoughts of food and staying warm, there’s isn’t room for much else. Nothing but the cold demands anything from you, and the break from the day-to-day grind is welcomed reprieve.

Of course, not all of us can take multi-week hiatuses from work to live outdoors and most of us aren’t interested in this sort of excursion. The solution instead is to understand that it’s smart to slow down and to do it in a controlled, intentional way.

For some of us, meditation or exercise can be used to treat stress acutely or in a preventative way. By practicing mindfulness, we can slow down and identify thought patterns that might be contributing to a feeling of anxiousness.  Mindfulness offers the opportunity to step back during periods of stress to get a different perspective.  It might not be possible to control every detail of the world around us, but we can change the way we experience it.  By allowing ourselves to slow down, we build up our reserves for periods of uncontrollable and high stress.  The goal of mindfulness isn’t to eliminate stress, but to change our relationship with it so it doesn’t overcome us.

Adequate rest is also essential to mental wellness. Rest fosters adaptability to move through an increasingly challenging world with greater creativity.  Rest is not frivolous.  We can enrich our lives by prioritizing rest and allowing our brain to recover from periods of high stress.  Building recovery time into a training program is important to athletes because this is the time that the body adapts to the stress of exercise.  Similarly, adequate recovery allows the brain to replenish energy stores and repair damaged tissues.

By slowing down or resting, we enrich our brain capacity and creativity to handle complicated and difficult tasks with less error. Rather than assuming that life is stressful and just ploughing through the day, challenge your assumption and improve your quality of life with some R&R.

A well-regarded and recognizable brand can often be a business’ most valuable asset. Relying on trademark law, businesses strive to protect their brands from use by others. Social media has created both an effective marketing platform as well as an easy opportunity to piggy-back off of the success of an established brand and/or social media presence. This article discusses when content posted on social media may infringe trademark rights and a social-media-specific enforcement mechanism.

Content posted on social media (e.g. photos, profile pictures, account usernames, etc.) may infringe on Canadian trademark rights if the posted content leads to consumer “confusion” as to the origin of any goods or services advertised in the post [1], provided that such goods or services are actually sold or provided to Canadians. In other words, if a consumer is “confused” as to whether posted content is associated with a trademark right owner and the technical elements of trademark infringement are present, the social media poster may advertently or inadvertently infringe those trademark rights. A body of Canadian case law has developed holding that whether a consumer would be “confused”, or not, is to be assessed as a matter of first impression in the mind of a casual consumer who is somewhat in a hurry who has no more than an imperfect recollection of a business’ trademark and who does not pause to give the matter any detailed consideration or scrutiny, nor to conduct a close examination of similarities and differences between trademarks [2]. Several factors are considered in this analysis [3].

For example, the use of a hashtag (i.e. a word or phrase preceded by the ‘#’ symbol that is used to classify or categorize posted content) may infringe Canadian trademark rights if confusion is likely. A hashtag is regularly visible when its corresponding posted content is accessed. If posted content corresponding to the hashtag “confuses” a consumer as to the origin of goods and/or services associated with the posted content, trademark rights may arguably be infringed. For example, a business posting a picture marketing athletic wear with the hashtag #justdoit arguably may “confuse” a consumer into thinking that the athletic wear advertised in the social media post originates from Nike, the owner of the JUST DO IT trademark slogan.

Where trademark rights are suspected to be infringed, the question arises as to how to stop such infringement.

Commencing court proceedings against an individual or business is always an option. However, court proceedings are inherently costly, time intensive and outcomes are unpredictable. In contrast, many social media platforms (e.g. Instagram, Facebook, Twitter, etc.) provide online forms through which alleged trademark infringement may be reported. For example, posted content may be reported to Instagram here, to Facebook here and to Twitter here.

Generally, the owner of trademark rights registered by a recognized intellectual property office, or a representative of the owner (e.g. a law firm acting on behalf of the owner), may report the posted content. A report generally must include proof of the owner’s trademark registration as well as evidence showing the allegedly infringing content. Upon submission, the report is reviewed by the social media platform and any action deemed appropriate by the social media platform is taken. Actions deemed appropriate may include removal of reported content, disablement of an account or the like. In some limited circumstances, a person whose content was removed may have a right of appeal.

Advantageously, a report resulting in the removal of posted content or an entire account can provide a prompt, effective and inexpensive remedy for an infringement of trademark rights. Further, in view of the present-day prevalence of social media, loss of social media content and/or the inability to post new content may significantly impair an infringer’s ability to market and/or carry on their business. Since a trademark registration is required by most social media platforms to prove ownership in a trademark, businesses with online presence should consider registering their marks in countries where infringement may be an issue.

Despite a desire to halt any potential infringement of trademark rights as early as possible, reporting suspected infringement to social media platforms is a serious matter. In many cases, a declaration (i.e. a solemn statement) must be submitted with any report declaring that the report has been made with a good faith belief that any reported content does in fact infringe trademark rights. Accordingly, before any action is taken, legal advice on whether trademark rights have in fact been infringed is recommended.  This is particularly so in Canada, where there are technical requirements that must be met to establish trademark infringement, including that there be “use” of the trademark as that term is defined in Canadian law.

References:

[1] Trade-marks Act, RSC 1985, c T-13 at s. 20(1)(a) [Trade-marks Act].

[2] Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, [2006] 1 SCR 824, 2006 SCC 23 at para. 20.

[3] Under subsection 6(5) of the Trade-marks Act, the following factors are to be considered in a “confusion” analysis:

a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
b) the length of time the trade-marks or trade-names have been in use;
c) the nature of the goods, services or business;
d) the nature of the trade; and
e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.