copyrights, trade-marks, trade secrets and patents · trade-mark • the purpose of a trade-mark is...
TRANSCRIPT
Susan Ben-Oliel & Roger Kuypers BCIC New Ventures Competition
April 17, 2012
Managing your Intellectual Property
Copyrights, Trade-marks, Trade Secrets and Patents
Disclaimer
! The information contained in this presentation is of a general nature. It is not legal advice and should not be construed as or in any way considered to be legal advice.
What is Intellectual Property?
! “intellectual” ! represents intellectual efforts and
achievements: ! writing of software, books, screen plays ! brands, logos, product or company names ! business plans, formulae, recipes, business
processes ! inventions, such as now drugs, electronics
goods, manufacturing processes
What is Intellectual Property?
! “property”
! usually has commercial value
! gives a bundle of rights to the owner: ! right to sell a product or service ! right to prevent others from doing so ! right to license others to use your rights
! IP is David’s slingshot
IP Management Considerations
I. IP identification II. IP ownership III. IP protection
Intellectual Property
! Four pillars of intellectual property ! Copyrights ! Trade-marks ! Trade secrets ! Patents
! Other forms of IP ! Industrial design ! Plant breeders rights ! Integrated circuit topography
Quiz
• What types of IP protect software?
Copyright
• Copyright is the sole right to produce or reproduce a work, or a substantial part of a work
• Protects the expression of idea, not the ideas themselves
Copyright
• “Work” includes articles, photographs, graphic designs, study protocols, data, computer programs, website designs
Copyright
• Requirements:
• Originality: the exercise of skill and diligence, but not necessarily creativity
• Fixation: must be expressed to some extent at least in some material form
Copyright
Ownership • As a general rule, the author (or creator) of a work is the first owner of copyright
• Employment is an exception to the general rule
• Freelancers or independent contractors are considered the “author” or their creations and own it
Copyright
Moral Rights
• Moral rights give the author of a work the exclusive right to be associated with the work and to the integrity of the work
• Moral rights can only belong to people
• Moral rights cannot be assigned, only waived
Copyright Protection
• Arises automatically
• © notices should be used
• Registration enhances rights • simple and inexpensive to register • registration in US is more significant
Copyright Management
• Focus on ownership and rights
• How are works developed?
• What do your contracts say about copyright? • employment agreements • service contracts • licenses
Copyright Questions?
Trade-marks
• Trade-marks are used to indicate the origin of goods and services
• They can be: • words • designs • the shape of goods of their packaging • combinations of colours • sounds
Trade-marks
Interbrand’s most valuable brands (2012):
$78B
$77B
$76B
$70B
$58B
$44B
$40B
$39B
$33B
$30B
Why are trade-marks important?
• The goodwill associated with products and companies reside in their respective trade-marks
• Consumers make decisions based on trade-marks
Trade-marks Rights
• Two types of trade-mark rights
• Common law rights • Rights arising through use
• Statutory rights • Rights arising through registration
Trade-marks
Ownership • Owned by first user or person that registers the trade-mark
• Use is most important
• Wares: “use” means on the wares, packaging or in any other manner so associated with the wares that notice of the association is given
• Services: “use” means use or display in the performance or advertising of those services
Managing trade-marks
A. Picking a good trade-mark
I. distinctiveness
II. searching and clearance
B. Registration
C. Enforcement
A. Picking a good trade-mark I. Distinctiveness
• Distinctiveness is the key to choosing an effective trade-mark
• The purpose of a trade-mark is to distinguish your wares and services from those of your competitors. To do so, it must be distinctive.
• Distinctiveness requires that your trade-mark: • does not describe your wares and services • is not confusingly similar to your competitors
trade-marks • Distinctive marks: KODAK, APPLE (for computers)
Descriptiveness
• Trade-marks law generally prohibits obtaining rights to and registering trade-marks that describe the character or quality of the owners wares and services
• Reason: trade-mark owners should not monopolize words that describe wares or services • E.g. “safe” cars, “fresh” bread
• It is tempting to choose trade-marks that are somewhat descriptive
• However, the more descriptive your trade-mark is, the less you will be able to claim rights to it and protect it
Confusion with other Trade-marks
• Trade-marks law generally prohibits the use and registration of trade-marks that are confusingly similar with those of your competitor because: • it creates confusion in the marketplace • infringes the rights of others
• It is tempting to choose marks that are like established marks
• Even if you are able to register a trade-mark with common elements, your ability to protect it could be compromised
Confusion
II. Searching and Clearance
• Prior to choosing a trade-mark, search the trade-marks register and marketplace to ensure that no identical or confusingly similar marks are already used, registered or applied to be registered for the same wares or services
• Best practice: come up with more than one potential trade-mark at the start of the searching process and rank according to preference
Search Tools
• The main search tools are: • Knock-out searches • Full availability searches • Investigations • Legal opinions
Knock-out Searches - Canada
Knock-out Searches - US
B. Registration
• Registration is by country (except EU) • Canada:
• One and a half years average for registration • $2,500 (no objections, oppositions) • 15 year renewable registration period
• Prioritize countries by value of market and likelihood of sales
Rights arising from registration
• Exclusive use of trade-mark throughout Canada with the registered wares and services
• To prevent others from using an identical or confusingly similar mark in Canada with the same wares and services
• To prevent others from using the trade-mark in a manner that is likely to depreciate the goodwill attached to the trade-mark
C. Enforcement
• Keep an eye out for possible infringement of your rights by
• monitoring your market for trade-marks that are similar to yours
• monitoring trade-mark registries for attempts to register marks that are similar to yours • you can order regional and global watch services to
alert you of such attempts
Enforcement
• Take action against infringements and potential infringements • cease and desist letters • litigation • opposition
• Failure to act can weaken your trade-mark rights
Trade-marks Management
• Pick the right trade-mark • consider more than one • avoid trade-marks that are descriptive or similar
to competitors’ trade-marks • search the marketplace • assess risks before proceeding
• Register trade-marks • Use it or lose it • Keep an eye out for infringers • Bonus tip: use fewer trade-marks
Integrated Circuit Topography (Circuit Board)
Patent (embedded
software, novel system, novel
method of manufacture)
Trade secret (Process,
customer list)
Trade-mark (Name / logo)
Copyright (Embedded software)
You Have an Invention – What Next?
• Your business has an invention, i.e. “something” that makes your product or service better/cheaper/faster
• Your goal – to prevent competitors from using that “technology”
The Problem
If you disclose your invention to the public, or wish to do so, others can use it unless…..
You take steps to protect it
Why Care about IP?
Intellectual Property Rights= Competitive Advantage monopoly blocking patents royalty stream attract investors negotiation-cross license patent pools
Pillars of IP
Pillars of intellectual property • Copyrights • Trade-marks • Trade secrets** • Patents** • Industrial design • Plant breeders rights • Integrated circuit topography
Trade Secrets
Trade secrets: • Information of commercial value that is not
disclosed to the public • The value has to be partially linked to the fact
that it’s not known • Efforts have to be made to maintain secrecy
Examples of Secrets
• Technology • Formulas, recipes • Client/Customer information • “Know how”
Reasonable Efforts to Maintain Secret
• CONTRACTS! Everyone who knows secret should be under a contractual obligation to keep it secret • Use Non-disclosure Agreements
• Other steps: • Mark documents as confidential • Control access to documents • Lock doors and cabinets
Advantages of Trade Secrets
• Never expire – as long as the secret remains secret
• No filings or government approval required • Can be very successful – Coke, KFC
Disadvantages of Trade Secrets
• Not everything can be protected – e.g. technology can be reverse engineered
• If the secret is exposed, then it’s no longer a secret • Can be expensive to maintain, as it requires security, contracts, complicated processes
• Relying on trade secret protection is useful when the IP is unlikely to result in granted rights under the existing IP regime and unlikelihood of reverse engineering
• Also useful if an extended term for exclusive rights is desired
• Trade secret protection is appropriate when the ability to copy or reverse engineer the construction, manufacturing process or formulation of the product is difficult
• Create an inventory • Contract before
disclosure • Need to know basis • Confidentiality clauses
with customers, distributors, etc.
• Physical and electronic security
• Train your employees • Mark all documents • Shred, don’t discard • Do not disclose source
code • Enforce confidentiality
and conduct exit interviews
Patents Trade-marks Industrial Design Copyright
Inventions
Aesthetics Ware & Services Literary, artistic,
dramatic & musical works
Why a Patent?
• Gives you the right to prevent others from making, using, selling the claimed invention=“negative rights”
• Lasts 20 years from filing date • In exchange – you have to disclose your invention
• Eventually it will become public domain
• What is a patent? • A government-sanctioned monopoly on an invention
• What can you patent? • Inventions: any new and useful art, process, machine, manufacture
or composition of matter, or any new and useful improvement.
What You Don’t Get With a Patent
• What doesn’t a patent grant? • Freedom to operate • Government enforcement of patent rights (only
through courts) • You must be your own “patent police”
Steps in Obtaining Patent
• Secrecy • Patentability • First Filing • Other (International) Filings • Exploiting your Patents
Secrecy Issues – KEEP THE SECRET!
• Public disclosure of invention prior to filing may be used against the application
• Use NDAs etc., prior to filing. After filing, can disclose contents of application
• Canada and US give one year grace period - most countries don’t
Considering a Patent
• Not everything is patentable • Requirements for Invention to be Patentable
• Novelty - the invention is “new” • Non-obvious – the invention not a minor tweak on what has been
done before • Utility – the invention does what it is described to do
• Subject Matter
Patent
New
Useful Not
Obvious
Patent
New Not Obvious
Useful • Absolute novelty: no-one else in the world can have invented it before and made it available to the public
• Keep it secret until you file the patent application. In Canada and the U.S., you have one year to file after public disclosure; in other countries, you lose your right to file if you have disclosed it publicly.
Patent
New Not Obvious
Useful
• An invention is useful if someone can take it and use it to construct something or do something with it.
Patent
New Not Obvious
Useful • There must be inventive ingenuity involved. It must be a “development or an improvement that would not have been obvious beforehand to workers of average skill in the technology involved.”
• The test person is the “omniscient but dull” artisan: aware of all the relevant knowledge, but incapable of ‘invention’.
Subject Matter
Traditional: • Mechanical Devices/Consumer Products • Electronics • Chemical compositions and uses • Pharmaceuticals
• Diagnosis & evaluation • Prevention • Clinical testing
Less traditional: • Games • Software • Business Methods – Bilski decision (US) Amazon (Canada)
What cannot be patented
• Scientific principles • Pure mathematic algorithms • Mental processes • Data (trade secret?)
The First Filing
• Preparing the Application • Work with your agent
• Provide detailed description • Remember you know this area of technology better than they
do • If cost is an issue, consider a provisional application • First to invent (US) vs. first to file
Where to File?
• Patents are territorial, i.e. a U.S. patent only covers activities in the U.S.
• Problem: Filing in multiple jurisdictions gets very expensive (> $100,000 very quickly), however your own applications and disclosure may be used against you if you wait
• Solution: Take advantage of treaties.
Claiming Priority
• International Treaties allow an applicant to file a first application, then file applications up to one year later and “backdate” the later filed applications
• Can used to defer costs • First application may be a provisional • Allows you to make invention public after first filing
PCT Applications
• Closest thing to “world patent” application (covers most major industrial countries)
• Treated as a pending application in all selected member countries
• Still requires entry into those countries within 2 ½ years – just defers cost
Provisional Applications
• Only serve as an initial filing for the purposes of claiming priority – they will never become a patent
• Can be less expensive than a regular application • Useful when invention is in development (can file multiple
provisionals) • BE CAREFUL – need to ensure provisional contains enough
to preserve priority claim
Common Strategy
• Goal – Delay costs as much as possible while preserving rights
• 1. File Provisional Application • 2. One year later, file PCT Application • 3. Two and a half years from provisional application, enter
national phase in selected jurisdictions • DISADVANTAGE – Delays obtaining patents
• How do you get a patent? • Patent search • Patent application
• 1½ to 3 years • Examined • Process of objections and responses • Patent issued
• Cost: $8,000 - $12,000 • Paris Convention
US Patent Application Filed
Examine
File Amendments
US Patent Renewals 3.5 y 7.5 y 11.5 y
PCT Application Filed (12 mos)
National Phase Entry
Canada
Deadlines and Renewals
Europe China AU NZ Japan
International Search/Examination 16 mos
(Published 18 mos)
International Examination (optional) 19 mos
• What can you do with a patent? • Manufacture and sell the invention • Stop others from manufacturing or selling the invention
• for 20 years retroactively to the date of filing the application • License the invention for manufacture or use by others • Assign the patent
Who is Inventor?
• Person(s) who has a: • Definite and conception of the invention (at least one claim) • Can describe to others how to practise invention
• Not “authorship” standard • Patent can be invalidated if inventorship is incorrect and error
reflects deceptive intent • Versus “ownership”
US Patent Law Changes
• First to File (March 16, 2013) • Microstatus • 35 U.S.C. § 102 • Third party submission of prior art during patent
prosecution • NEW post-grant review procedures.
Microentities
Micro entities are entitled to a 75% reduction in certain fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.
Leg up for very small inventors-promotion “grassroots” innovation
Microentity
1) Qualifies as a small entity as defined in 37 CFR 1.27;
2) has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Third Party Submissions- Pending Applications • During prosecution, any third party may submit:
• Any patent application, patent, or printed publication • Concise statement of relevance and fee required • May include statements of the patent owner before a federal
court or the Office taking a position on the scope of any claim of a particular patent
• Free for first submission (with 3 pieces art or fewer) • Examiner required to consider submissions in next official
action. • Submitted documents listed on the face of any patent
granting from application, indicating that USPTO consideration
Post Grant Review
• Post-Grant Review (1) • (Sec. 6, §§321-329) • Who? Any person, other than the patent owner • Must identify all real parties in interest-not anonymous • When? Within 9-months of issuance or reissue of patent • Art? Any ground of invalidity (not just patents or
publications=NEW) • Threshold? More likely than not that at least one challenged claim
is unpatentable, or novel question of law • Any party is entitled to appeal an "adverse" decision after post-grant
review • Phase-in: PTO may limit number of PGRs in first 4 years
Alternatives to Patents
Trend to Open Innovation • FRAND (Fair+Reasonable+ Non-discriminatory) • Patent Pool • Patent Commons • Open Source
• An industrial design is: • a decorative feature, such as a design or shape, • … applied to an object … • … that is intended to be reproduced more than 50 times.
• Industrial designs are excluded from copyright and must be registered under the Industrial Design Act.
• Potential overlap with trade dress protection • Like trade dress, industrial design cannot be “functional” to obtain
protection. • Functional: when it is essential to the use or purpose of the device or
when it; refers to product-design aspects that go beyond enhancing the aesthetic appeal of the product, and serves some other purpose such as improving product performance.
• If the product design is found to be legally functional, protection is not available
HOLEY SOLES CROCS CANADA INC.
Integrated Circuits
• Registration of the topography: • Exclusive right to reproduce, manufacture, etc. • Does not stop copying for research or teaching • Does not protect any idea, concept, process or system that may be
embodied in the topography
Integrated Circuits
• Registration possible if: • the topography is original; • the application for registration is filed within two years after
the first commercial exploitation (e.g., sale); and • the creator is Canadian or a national of treaty country (e.g.,
the United States, Japan, and many others).
1. ANY innovative idea should be kept as a secret in the beginning
• to preserve option of patenting (or industrial design) at later stage
Things to bear in mind
2. If you apply for a patent, only give up what is necessary
• The decision to apply for a patent does not necessarily require giving up all of one’s TS!
• However, patent application must contain : • enough to enable skilled person to practice the invention • the best mode known to the applicant for practicing the
invention • (Software P in USA: required to disclose source code?)
Things to bear in mind
3. If you apply for a patent, your TS may still be protected for a while
• In most countries: only publication after 18m. You may withdraw application any time < publication
• In USA: possible to request non-publication of the patent application until the patent is issued
Things to bear in mind
4. Once patent published → TS lost in ALL COUNTRIES
• patent documents “easily accessible” to public • if patent application published and later rejected → you lose
both patent and TS rights • some technology (e.g. software) may be patentable in USA
but not in Belarus or Europe …
Things to bear in mind
• Patent and TS are often complementary to each other:
• Patent applicants generally keep inventions secret until the patent application is published by the patent office.
• A lot of valuable know-how on how to exploit a patented invention successfully is often kept as a trade secret.
• Some businesses disclose their trade secret to ensure that no one else is able to patent it (defensive publication).
