An Introduction to An Introduction to Intellectual PropertyIntellectual Property

What are patents?What are patents? and and

How can they be used?How can they be used?

Presentation by Joe IrvinePresentation by Joe IrvineDirector, TTBE uOttawaDirector, TTBE uOttawa

Jan. 30, 2006Jan. 30, 2006For For

Dr. Hanan AnisDr. Hanan Anis2nd year engineering and 2nd year engineering and computer science studentscomputer science students

OutlineOutline

Introduction to TTBEIntroduction to TTBE What is Intellectual Property (IP)?What is Intellectual Property (IP)? Legal Protection for IPLegal Protection for IP Types of, and Examples of, IPTypes of, and Examples of, IP What is a patent? What is a patent? How do we file a patent?How do we file a patent? Patent StructurePatent Structure Case Study RIM vs NTPCase Study RIM vs NTP Summary and ConclusionsSummary and Conclusions

Technology Transfer & Business Enterprise Technology Transfer & Business Enterprise (TTBE)(TTBE)

is part of the Office of the Vice-President, Researchis part of the Office of the Vice-President, Research

What does What does TTBETTBE do? do? Establish Research PartnershipsEstablish Research Partnerships

• Negotiate and Support Contract ResearchNegotiate and Support Contract Research Establish Technology PartnershipsEstablish Technology Partnerships

• Identify and Protect Intellectual Property (IP)Identify and Protect Intellectual Property (IP)• License and Commercialize IPLicense and Commercialize IP

www.ttbe.uottawa.ca www.vrtt.uottawa.ca

Facilitate New Research; Facilitate New Research; Support Institution and Researchers;Support Institution and Researchers; Provide Researchers with new Provide Researchers with new

Opportunities and Tools Opportunities and Tools Corporate ResponsibilityCorporate Responsibility Transfer IP to Business for Economic Transfer IP to Business for Economic

BenefitBenefit

Why does the University protect Why does the University protect (and commercialize) IP?(and commercialize) IP?

What is Intellectual Property (IP)?What is Intellectual Property (IP)? Legal Definition: Legal Definition: “Intellectual Property” (IP) “Intellectual Property” (IP)

refers to all materials, concepts, know-how, refers to all materials, concepts, know-how, formulae, inventions, improvements, formulae, inventions, improvements, industrial designs, processes, patterns, industrial designs, processes, patterns, machines, manufactures, compositions of machines, manufactures, compositions of matter, compilations of information, patents matter, compilations of information, patents and patent applications, copyrights, trade and patent applications, copyrights, trade secrets, technology, technical information, secrets, technology, technical information, software, prototypes and specifications, software, prototypes and specifications, including rights to apply for protections under including rights to apply for protections under statutory proceedings available for those statutory proceedings available for those purposes, provided they are capable of purposes, provided they are capable of protection at law.protection at law.

Source: Networks of Centres of Excellence Agreement

What is Intellectual Property (IP)?What is Intellectual Property (IP)? Intellectual Property is any form

of knowledge or expression created using (your) intellect. IP includes inventions, computer software, trademarks, literary, artistic musical or visual works and expertise or know-how. Some IP can be legally protected.

Legal Protection for IPLegal Protection for IP 7 major forms of Legal IP Protection7 major forms of Legal IP Protection Agent GrantingAgent Granting

• Trade SecretsTrade Secrets CorporationCorporation• PatentsPatents GovernmentGovernment• Trade MarksTrade Marks GovernmentGovernment• CopyrightsCopyrights GovernmentGovernment• Industrial Designs Industrial Designs GovernmentGovernment• Integrated Circuit Topographies Integrated Circuit Topographies GovernmentGovernment• Plant Breeder’s RightsPlant Breeder’s Rights GovernmentGovernment

Trade SecretsTrade Secrets – Some know-how, expertise, – Some know-how, expertise, techniques and formulas are protected by being kept techniques and formulas are protected by being kept as trade secrets – this requires Confidentiality as trade secrets – this requires Confidentiality agreements with employees etc. Perhaps most famous agreements with employees etc. Perhaps most famous corporate examples are formulas for Coca-cola and corporate examples are formulas for Coca-cola and Kentucky Fried ChickenKentucky Fried Chicken

Forms of Legal Protection for IPForms of Legal Protection for IP PatentsPatents cover new inventions (process, cover new inventions (process,

machine, manufacture, composition of machine, manufacture, composition of matter), or any new and useful improvement matter), or any new and useful improvement of an existing invention; of an existing invention;

Trade-marks Trade-marks are words, symbols or designs are words, symbols or designs (or any combination of these features), used (or any combination of these features), used to distinguish the wares or services of one to distinguish the wares or services of one person or organization from those of others in person or organization from those of others in the marketplace; the marketplace;

CopyrightsCopyrights provide protection for literary provide protection for literary (including software), artistic, dramatic or (including software), artistic, dramatic or musical works and performance, sound musical works and performance, sound recording and communication signal recording and communication signal

Forms of Legal Protection for IP - 2Forms of Legal Protection for IP - 2 Industrial DesignsIndustrial Designs are the visual features of are the visual features of

shape, configuration, pattern or ornament (or shape, configuration, pattern or ornament (or any combination of these features), applied to any combination of these features), applied to a finished article of manufacture; a finished article of manufacture;

Integrated Circuit TopographiesIntegrated Circuit Topographies refer to the refer to the three-dimensional configuration of the three-dimensional configuration of the electronic circuits embodied in integrated electronic circuits embodied in integrated circuit products or layout designs;circuit products or layout designs;

Plant Breeder’s RightsPlant Breeder’s Rights provides protection for provides protection for new varieties, if new, distinct, uniform and new varieties, if new, distinct, uniform and stable from generation to generation).stable from generation to generation).

Intellectual Property Protection Intellectual Property Protection Most forms of IP protection are rights granted to Most forms of IP protection are rights granted to

an individual or organization by the federal an individual or organization by the federal government for that country (Originally were government for that country (Originally were rights granted by the King)rights granted by the King)

Each country has its own IP rights – which means Each country has its own IP rights – which means you must seek IP protection in each country you you must seek IP protection in each country you wish to commercialize the inventionwish to commercialize the invention

Countries are (slowly) making IP protection Countries are (slowly) making IP protection process comparableprocess comparable

PCT convention allows for international filing of PCT convention allows for international filing of patents and European patent office allows for patents and European patent office allows for simultaneous filing in all (or selected) countries in simultaneous filing in all (or selected) countries in the EU the EU

What is the commercial purpose of IP?What is the commercial purpose of IP?1.1. IP establishes a right and identifies ownership of the IP establishes a right and identifies ownership of the

intellectual creativity which enables its owner to profit intellectual creativity which enables its owner to profit from the creative endeavour and to exclude others from from the creative endeavour and to exclude others from making, selling or using the same without the necessary making, selling or using the same without the necessary authorization.authorization.   

2.2. IP enhances the value and profitability of a business. It IP enhances the value and profitability of a business. It signifies a certain standard, method or competitive edge signifies a certain standard, method or competitive edge and lays the groundwork for maximizing on the and lays the groundwork for maximizing on the commercial results of its ownership. commercial results of its ownership.    

3.3. IP assets accrue to their owners through its business IP assets accrue to their owners through its business development and strategies: from product development development and strategies: from product development to design, from service delivery to marketing, and from to design, from service delivery to marketing, and from raising financial resources to exporting or expanding its raising financial resources to exporting or expanding its business through licensing or franchising. business through licensing or franchising.    

4.4. IP instills trust, confidence and loyalty to the consumers it IP instills trust, confidence and loyalty to the consumers it markets through a distinct identity, image and reputation. markets through a distinct identity, image and reputation.

http://strategis.ic.gc.ca/sc_mrksv/cipo/toolkit/ab_va-e.htmlhttp://strategis.ic.gc.ca/sc_mrksv/cipo/toolkit/ab_va-e.html

Canadian Intellectual Property Office http://cipo.gc.ca/Canadian Intellectual Property Office http://cipo.gc.ca/

United States Patent and Trademark Office http://www.uspto.gov/

http://www.european-patent-office.org/index.en.php

Examples of IPExamples of IP

The terminology of IP can seem The terminology of IP can seem complex complex

To see examples of the four major To see examples of the four major commercial forms of IP – Patents, commercial forms of IP – Patents, Copyrights, Industrial Design, Copyrights, Industrial Design, Trademark the Canadian Intellectual Trademark the Canadian Intellectual Property Office on-line database was Property Office on-line database was searched for each type of IP using searched for each type of IP using the same keyword “phone”the same keyword “phone”

Canadian Industrial Designs DatabaseCanadian Industrial Designs Databasehttp://strategis.ic.gc.ca/app/cipo/id/displaySearch.do?language=enghttp://strategis.ic.gc.ca/app/cipo/id/displaySearch.do?language=eng

Search for: Search for: PhonePhone in Title From 2002-06-15 To in Title From 2002-06-15 To 2006-01-19 58 found.2006-01-19 58 found.

105750 - CELLULAR PHONE BASE STATION105750 - CELLULAR PHONE BASE STATION

Page 1 of 5Page 1 of 5

105749 - CELLULAR PHONE CHARGING BASE105749 - CELLULAR PHONE CHARGING BASE

Page 1 of 4Page 1 of 4

Industrial designs consist of diagrams of the final manufactured form of a product

Canadian Copyrights DatabaseCanadian Copyrights Databasehttp://strategis.ic.gc.ca/app/cipo/copyrights/http://strategis.ic.gc.ca/app/cipo/copyrights/

Search for: Search for: Phone Phone in the Title in the Title Documents found:Documents found: 44 44

5.5.Chinese Phone Directory Chinese Phone Directory   Registration number:Registration number: 10213251021325Type:Type: Copyright  Copyright Author:Author: Wang, (Andy) Cheng - Wang, (Andy) Cheng - Hsiung Hsiung Owner:Owner: Asia Phone Book Inc.   Asia Phone Book Inc.  Registration Date:Registration Date: 2004-06-10 2004-06-10

6.Filipino Toonie Talk Prepaid Phone Card  6.Filipino Toonie Talk Prepaid Phone Card  Registration Registration number:number: 1020162 1020162Type:Type: Copyright  Copyright Author:Author: KadCom KadCom Services Limited / Kader, Kandoker Faisal / c/o KadCom Services Limited / Kader, Kandoker Faisal / c/o KadCom Services Limited Services Limited Owner:Owner: KadCom Services Limited KadCom Services Limited   Registration Date:Registration Date: 2004-04-27 2004-04-27

7.Caillou - The Phone Call  7.Caillou - The Phone Call  Registration number:Registration number: 10167461016746Type:Type: Copyright  Copyright Author:Author: Pleau-Murissi, Marilyn Pleau-Murissi, Marilyn Owner:Owner: Les Éditions Chouette (1987) inc. Les Éditions Chouette (1987) inc.

Copyright covers the content of documents, software etc.

Canadian Trade-marks DatabaseCanadian Trade-marks Databasehttp://strategis.ic.gc.ca/cipo/trademarks/search/tmSearch.dohttp://strategis.ic.gc.ca/cipo/trademarks/search/tmSearch.do

Search for: Search for: PhonePhone in the TM Lookup: All from 1 in the TM Lookup: All from 1 January 1865 to 17 January 2006 January 1865 to 17 January 2006 Documents Documents found: found: 853853

YOUR PHONE AWAY FROM PHONE , REGISTERED, YOUR PHONE AWAY FROM PHONE , REGISTERED,

0536486, TMA313727 (9K) 0536486, TMA313727 (9K)

THE BOOK THE PHONE COMPANY DOESN'T WANT THE BOOK THE PHONE COMPANY DOESN'T WANT YOU TO READ , REGISTERED, 0736358, YOU TO READ , REGISTERED, 0736358, TMA460417 (7K) TMA460417 (7K)

Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP. , Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP. , EXPUNGED, 0555568, TMA325678 (8K) EXPUNGED, 0555568, TMA325678 (8K)

Trademarks are a name, logo, design or slogan for a commercial enterprise

Canadian Patents Database Canadian Patents Database http://patents1.ic.gc.ca/intro-e.htmlhttp://patents1.ic.gc.ca/intro-e.html

Search Search ((((PhonePhone)) 1930 documents out of 1659727 matched your query. )) 1930 documents out of 1659727 matched your query.

1.25180551.2518055 USER AUTHENTICATION SYSTEM AND METHOD  USER AUTHENTICATION SYSTEM AND METHOD  

2.25171322.2517132 METHOD AND SYSTEM FOR PROVIDING SUPERVISORY METHOD AND SYSTEM FOR PROVIDING SUPERVISORY CONTROL OVER WIRELESS PHONE USAGE  CONTROL OVER WIRELESS PHONE USAGE  

3.24985843.2498584 PHONE NUMBER REPLACE CODE SYSTEM AND METHOD  PHONE NUMBER REPLACE CODE SYSTEM AND METHOD  

4.24970174.2497017 NETWORK TELEPHONE SYSTEM AND METHODS THEREFOR  NETWORK TELEPHONE SYSTEM AND METHODS THEREFOR  

5.24933035.2493303 SYSTEM AND METHOD TO INITIATE A MOBILE DATASYSTEM AND METHOD TO INITIATE A MOBILE DATACOMMUNICATION UTILIZING A TRIGGER SYSTEM  COMMUNICATION UTILIZING A TRIGGER SYSTEM  

6.24760776.2476077 MULTIPLE SERVICE PROVIDER PREPAID WIRELESS MULTIPLE SERVICE PROVIDER PREPAID WIRELESS SERVICE CARD  SERVICE CARD  

7.24730027.2473002 SEARCHING EMAIL ADRESS BY NUMERICAL CODES  SEARCHING EMAIL ADRESS BY NUMERICAL CODES  

Patents often describe a method or process

What is a patent?What is a patent? With a patent, the government gives the inventor, With a patent, the government gives the inventor, the right to the right to

exclude othersexclude others from making, using or selling the invention for from making, using or selling the invention for a maximum of 20 years after the patent was filed. a maximum of 20 years after the patent was filed.

In exchange, the inventor must provide a full description of In exchange, the inventor must provide a full description of the invention and the Patent Office will publish the the invention and the Patent Office will publish the application 18 months from the first filing date for people to application 18 months from the first filing date for people to read about, (but not make, use or sell) the invention to read about, (but not make, use or sell) the invention to promote the sharing of technological information.promote the sharing of technological information.

PATENTS are: PATENTS are: • 1) documents protecting the rights of the inventor; and1) documents protecting the rights of the inventor; and• 2) a public repository of technical information.2) a public repository of technical information.

The rights conferred by a patent extend throughout the issuing The rights conferred by a patent extend throughout the issuing country - but not to other countries, which must be applied for country - but not to other countries, which must be applied for in each country. in each country.

Source: http//:cipo.gc.ca

Novelty, Utility, IngenuityNovelty, Utility, Ingenuity Novelty:Novelty: The original inventor of the first such invention The original inventor of the first such invention

in the world can be granted a patent ONLY if the invention has in the world can be granted a patent ONLY if the invention has NOT been made public before you filed the application.NOT been made public before you filed the application.

Utility:Utility: A valid patent cannot be obtained for something A valid patent cannot be obtained for something that doesn't work, or that has no useful function. that doesn't work, or that has no useful function.

Ingenuity/Obviousness:Ingenuity/Obviousness: The invention must not be The invention must not be obvious beforehand to workers of average skill in the obvious beforehand to workers of average skill in the technology involved. technology involved.

______________________________________________________________________________________________________

Improvements:Improvements: An improvement to an existing patented An improvement to an existing patented invention, can be patented - but the original patent may still be invention, can be patented - but the original patent may still be in force and the making of the improvement would probably be in force and the making of the improvement would probably be an infringement. an infringement.

How do you file for a patent?How do you file for a patent?

Invention Disclosure:Invention Disclosure: Describe invention, Describe invention, list unique features of invention, all list unique features of invention, all inventors, relevant literature/patents, inventors, relevant literature/patents, dates and records (including any data) dates and records (including any data) documenting inventiondocumenting invention

Preliminary Patent Search:Preliminary Patent Search: Key words from Key words from Invention Disclosure (US PTO; CIPO) Find Invention Disclosure (US PTO; CIPO) Find related patents. Use these as a guide for related patents. Use these as a guide for patent scope and description. Need to patent scope and description. Need to include all/any relevant patents in list of include all/any relevant patents in list of relevant background to inventionrelevant background to invention

Filing a patent – Next StepsFiling a patent – Next Steps Formal patent search Formal patent search Drafting patentDrafting patent

• DrawingsDrawings• ClaimsClaims

Review by Inventors Review by Inventors and Patent Agentsand Patent Agents

Filing with Patent Filing with Patent OfficeOffice• Patenting StrategyPatenting Strategy• Countries to fileCountries to file• Provisional patentProvisional patent

Patent StructurePatent Structure AbstractAbstract Field of InventionField of Invention Brief Description of Brief Description of

InventionInvention Description of Prior ArtDescription of Prior Art Description of Description of

InventionInvention Drawings of InventionDrawings of Invention List of ClaimsList of Claims

Relation of New Patent Application to Existing PatentsRelation of New Patent Application to Existing Patents

Each patent is a description of a Each patent is a description of a novel invention that builds on the novel invention that builds on the prior artprior art

11stst relevant patent has the relevant patent has the broadest scopebroadest scope

22ndnd patent builds on disclosure of patent builds on disclosure of 11stst patent and includes patent and includes improvements and different improvements and different applicationsapplications

33rdrd patent builds on both patents patent builds on both patents for a smaller scope and different for a smaller scope and different applicationapplication

Specific claims of unique and Specific claims of unique and novel features cannot overlap novel features cannot overlap with previous patents but can with previous patents but can build on the “prior art” to create a build on the “prior art” to create a new invention/patentnew invention/patent

Rights to commercialize may be Rights to commercialize may be dependent on access to prior art dependent on access to prior art and previous patents unless they and previous patents unless they have expiredhave expired

Wheel ACME Corp

Bicycle Wheel ACME Corp

Wheel chairMedical Corp

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TimeFigure based on Protecting Scientific Ideas & Inventions (1988) CRC Press

Patent Prosecution - TimelinesPatent Prosecution - Timelines Filing the Patent (t=0)Filing the Patent (t=0) 11stst Office Action 1-3yrs (Response) Office Action 1-3yrs (Response) Publication 1.5 yrsPublication 1.5 yrs 22ndnd Office Action 2-5 yrs (Response) Office Action 2-5 yrs (Response) Examination DecisionExamination Decision

• Rejection or IssuanceRejection or Issuance• Patent Coverage from t=0 to t=20 yrsPatent Coverage from t=0 to t=20 yrs• Some countries 17 yrs from issuanceSome countries 17 yrs from issuance

Annuity Fees required to keep patent Annuity Fees required to keep patent rightsrights

Patents issued in 2006 will likely provide Patents issued in 2006 will likely provide protection until 2021protection until 2021

Research In Motion Inc. vs. New Technologies Products Inc Research In Motion Inc. vs. New Technologies Products Inc

Commercial IP LitigationCommercial IP Litigation RIM has 123 US patent issued since 1993RIM has 123 US patent issued since 1993 NTP (and predecessors) have 5 patents issued NTP (and predecessors) have 5 patents issued

between 1995 and Nov 2001between 1995 and Nov 2001• Patents issued to Inventor and licensed or assigned to 3 Patents issued to Inventor and licensed or assigned to 3

companies founded by Inventorcompanies founded by Inventor• Eventually purchased from bankrupt company by lawyer Eventually purchased from bankrupt company by lawyer

and inventor. and inventor. • NTP was a “holding company” only for these patentsNTP was a “holding company” only for these patents

2000 NTP sends form letter to RIM warning about 2000 NTP sends form letter to RIM warning about direct infringement on its “wireless e-mail” direct infringement on its “wireless e-mail” patentspatents

May 2001 RIM sues Glenayre Electronics and May 2001 RIM sues Glenayre Electronics and issues media release about email users will have issues media release about email users will have to license RIM patentsto license RIM patents

Nov 2001 NTP sues RIM for infringementNov 2001 NTP sues RIM for infringement

Globe & Mail Jan 28, 2006

RIM vs NTP 2002-2004RIM vs NTP 2002-2004 Nov 2002 Court proceedings begin Court Nov 2002 Court proceedings begin Court

rules in favor of NTP; Issues Damages at rules in favor of NTP; Issues Damages at US$23M plus royalty; US PTO re-examines US$23M plus royalty; US PTO re-examines NTP patents (to be completed 2006)NTP patents (to be completed 2006)

March 2003 Court increases damages to March 2003 Court increases damages to US$60M due to RIM legal tactics and US$60M due to RIM legal tactics and testimonytestimony

Aug 2003 Injunction issues forbidding RIM Aug 2003 Injunction issues forbidding RIM sales within US (stayed ending appeal)sales within US (stayed ending appeal)

Dec 2004 Verdict upheld on appealDec 2004 Verdict upheld on appeal

Globe & Mail Jan 28, 2006

RIM vs NTP 2005-06RIM vs NTP 2005-06 Mar 2005 RIM NTP reach $450M settlementMar 2005 RIM NTP reach $450M settlement Jun 2005 RIM NTP agreement unravelsJun 2005 RIM NTP agreement unravels Aug 2005 Case goes to US Supreme CourtAug 2005 Case goes to US Supreme Court Sep 2005 US PTO rejects NTP patents but does Sep 2005 US PTO rejects NTP patents but does

secondary reviewsecondary review Dec 2005 US PTO rejects 4 of 5 patents, Dec 2005 US PTO rejects 4 of 5 patents,

continues review on 5continues review on 5thth. NTP receives 30 day . NTP receives 30 day extension to respond before final rulings extension to respond before final rulings

Jan 2006 Supreme Court refuses to hear caseJan 2006 Supreme Court refuses to hear case

Next month: Feb 2006 Judge to hold hearing on Next month: Feb 2006 Judge to hold hearing on injunction and damagesinjunction and damages

Globe & Mail Jan 28, 2006

ConclusionConclusion Intellectual Property Protection – including Intellectual Property Protection – including

patents – are government issued rights to patents – are government issued rights to inventorsinventors

Rights include right to sue infringersRights include right to sue infringers Patents are only as good as the legal fees Patents are only as good as the legal fees

you have to back them upyou have to back them up Patents are commercial assets (and Patents are commercial assets (and

business tools) that companies can use to business tools) that companies can use to raise investment, protect products and raise investment, protect products and technology and can be tools to litigate technology and can be tools to litigate against competitorsagainst competitors

SummarySummary There are several types of intellectual There are several types of intellectual

property protection: including patents, property protection: including patents, copyright, trademark and industrial designcopyright, trademark and industrial design

Patents recognize novelty, ingenuity (non-Patents recognize novelty, ingenuity (non-obviousness) and utilityobviousness) and utility

Patents build on prior art and require Patents build on prior art and require public disclosure 18 months after filingpublic disclosure 18 months after filing

Patents protect inventionsPatents protect inventions Patents are government rights that give Patents are government rights that give

commercial and legal protection to commercial and legal protection to inventions and the ability to litigate inventions and the ability to litigate against competitionagainst competition