Intellectual Property, Contract and Commercialization for Graduate

Students and Postdoctoral Fellows.

Presenters:D. Scott Lamb

Associate Counsel, Richards Buell Sutton

Sze-Mei YeungPartner, Richards Buell Sutton

Greg SasgesIn-House Legal Counsel, Office of Research Services, SFU

Ian HandManaging Director, SFU Innovation Office & Executive Director Venture Labs®

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Objectives

• Recognize the strategic value and benefits of intellectual property (IP)

• Understand the various forms of IP

• Learn how to protect and use your IP

• Discover a wealth of IP resources

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• IP is a valuable business asset

• IP information and protection may help you avoid costly mistakes

• IP gives you an edge over the competition

• IP can be sold, licensed or traded

IP: what’s in it for you?

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Benefits of IP information

• Identify trends

• First look at the competition

• Identify key contacts

• Find solutions to problems

• Avoid duplication of effort

• Prevent infringement

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• Trade secrets

• Patents

• Trade-marks

• Copyrights

• Industrial designs

Common forms of IP

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What is a“trade secret”?

Any confidential information used in a business that provides a competitive edge and can be kept secret

The confidential information can be:• specific product information

• business information

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Trade secret protection

• Trade secrets are protected by confidentiality and licence agreements

• Protection lasts forever, as long as confidentiality is maintained

• If the trade secret is disclosed, protection is lost

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The “deal” of the patent

The owner provides a full public disclosure of the invention

The Canadian government provides a grant of exclusive rights in Canada to the owner for 20 years from the date of filing

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What is patentable?

• Product

• Composition

• Machine

• Process

… or its improvement

The invention must be new, useful and non-obvious

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• Prior to filing an application:

– Keep your invention confidential

– Search patent databases and scientific literature

– Consult a registered patent agent

• Patent application:

– Draft and file

– Request examination

– Respond to CIPO’s objections, if any

Patenting process

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What is a trade-mark?

• Word(s) KODIAK

• Word and design

• Design

• Slogan “ZOOM-ZOOM”

Reproduction courtesy of Kodiak Group Inc.; Hasbro, Inc.; Schering-Plough Healthcare Products, Inc. All rights reserved; Mazda Motor Corporation.

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What is a trade-mark?(continued)

• Shape

• Sound

• Certification mark

Reproduction courtesy of (bottle & design) Coca-Cola Ltd.; Metro-Goldwyn-Mayer Studios Inc.; (Woolmark design) The Woolmark Company.

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Trade-mark protectionand registration

Registered Not registered

Geographic coverage Coverage is regional across Canada

Period is 15 years, Period of use is to renewable be proven

Present in the Not present in theTrade-mark Register Trade-mark Register

Registration serves as Ownership to be proof of ownership demonstrated and

defended

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Use it or lose it

• Control all use

(distributors/retailers/licensees)

• License use to others

• Avoid generic use

• Stop unlicensed use

• Maintain continuous use

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What is copyright?

It is the exclusive right to produce or reproduce a creation• Literary

• Dramatic

• Musical

• Artistic

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• Copyright is automatic upon creation and registration provides a legal advantage

– Only form of protection that is world-wide

• Use proper marking: © owner’s name, year

• Term is generally life of author plus 50 years

Copyright registrationand protection

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What is anindustrial design?

The visual features of shape, configuration, pattern or ornament, or any combination of those features applied to a manufactured article

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Industrial designregistration and protection

• Industrial designs must be registeredfor protection

– Keep confidential prior to filing

– Search, file with CIPO and await a response

• Design registration provides a maximumof ten years of protection in Canada

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Summary of IP forms

ProtectApplication

required Term

Trade secrets

Confidential information

N/A indefinite

Patents Inventions yesUp to 20

years from date of filing

Trade-marksWords,logos,

slogans, sounds

recommended15 years, renewable

CopyrightsWritings,

music, art, plays, etc.

recommendedlife + 50 years

(many exceptions)

Industrial designs

Visual features

yes up to 10 years

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Summary

• IP is a valuable business asset and appeals to consumers and investors

• Using IP system helps avoid costly mistakes

• IP information is an immense source of business and technology information

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Intellectual Property Ownership and Contractual Issues

for Graduate Students and Postdoctoral Fellows

September 11, 2014

Presented to Simon Fraser Universityby Sze-Mei Yeung

Outline

• Employees versus Contractors• Collaborative Research Agreements (“CRA”) • Joint Ownership of Intellectual Property (“IP”)• Confidentiality & Publication• Improvements

Employees versus Contractors

– IP created by employees generally owned by employer if created using employer’s resources and as part of employment duties

– Independent contractor owns IP – Contracts can amend or supercede these concepts – Need clear language addressing ownership of

inventions

Sample Language– You agree that all data, designs, inventions,

discoveries, improvements, software, copyright, know-how or other intellectual property, whether or not patentable or copyrightable, created by you at any time during your employment OR during the term of this Contract (the “Works”) are owned by ABC Co.

– Without limiting the foregoing, you hereby irrevocably waive all moral rights in the Works and assign and transfer to ABC Co. your entire right, title and interest in such Works.

Research Collaborations

• Persons (or organizations) with complementary technologies agree to collaborate in a research program to co-develop a single product

• Pools intellectual capital & financial resources to further research and development of less mature technology, under the terms of a CRA

• Issues to consider: clear project definition (responsibilities, timelines and budgets), ownership of IP, filing and prosecution of patents, rights to commercialise

Joint Ownership

• A joint owner cannot license or assign a partial interest in a jointly owned work without consent of other co-owner(s)

• Complicates licensing and commercialisation of inventions to third parties if there are multiple joint owners

• Alternatives to assigning rights include choosing not to participate in a project or excluding certain “background or pre-existing technology” from any assignment

Confidentiality & Publication

• Confidentiality provisions or agreements protect disclosure and/or unauthorised use of confidential information including trade secrets and undisclosed technology

• Usually needs to be balanced with rights of faculty/students to publish research results

Sample Language

• You will keep the Confidential Information in confidence and will use the Confidential Information solely for the purposes of performing the services set out in this Contract, and will not without ABC Co's prior written consent, disclose any Confidential Information to any person or entity

Publication

• Reserve rights to publish research results• Provide 30 to 60 days to review proposed publication

or disclosure • Include period of time after which publication must

proceed (e.g. 6 months) • Confidentiality provisions should allow disclosure to

faculty / students etc. who require confidential information

Improvements

• An addition or alteration which increases the quality or value of something

• “Improvements” used in licenses and CRA’s • Can be broadly or narrowly defined • Broad definition may provide automatic pipeline to

future developments

Sample Language• Broad Definition: “means improvements, variations, updates,

modifications, and enhancements made and/or acquired by either Licensor or Licensee relating to the Technology at any time after the Start Date.”

• Narrow Definition: “means a patent application or patent covering an improvement to the invention claimed in the Licensed Patent, provided that the improvement: (i) performs a function or functions substantially the same as those described in the claims of the Licensed Patent, (ii) is invented solely by the Principal Investigator while employed at SFU; and (iii) cannot be legally used or practiced without infringing a valid claim of the Licensed Patent.”

700 – 401 West Georgia StreetVancouver, BC Canada V6B 5A1

www.rbs.ca

Questions?

Sze-Mei Yeung, Partner604.661.9247syeung@rbs.ca

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