intellectual property strategies
TRANSCRIPT
Intellectual PropertyMay 24, 2016
Speaker: Ian Bell, Acting Manager, Regional Operations
Intellectual Property:“Intellectual property refers to creations of the mind: inventions, literary and artistic works, symbols, names, images, and designs used in commerce”
Innovation:“A process through which economic or social value is extracted from knowledge – by creating, diffusing and transforming ideas – to produce new or improved products, services and processes”
Forms of Intellectual Property:• Patent• Copyright• Trademark• Trade Secret• Industrial Design• Integrated Circuit Topography• Plant Breeder Rights
Industrial Design:• Protects a manufactured article
which has a specific appearance – eg. shape, configuration, pattern, ornament or any combination of these.
• Protection applies to the finished article, not the process.
• 10 years of protection in Canada.• A design must be new and original –
sufficiently distinct so as not to resemble a design already registered.
Apple, Inc.: Reg’n No. 156454
Herman Miller. Inc. (2004): Reg’n No. 100297 “Task Chair”
Trademark/Service Mark:• A trademark is a word, a symbol, a logo, a picture, a
design of goods (or services), or a combination of these, used to distinguish the wares (or services) of one person or organization from those of others in the marketplace.
• New mark in Canada – sounds
• TM v. ®
Copyright:• Protects authors of “original works of authorship”
- including literary, dramatic, musical, artistic and certain other intellectual works (eg. software code).
• Protection is automatic on both published and unpublished works.
• Protection is for life of the author + 50 years.• © [First year of publication], [Name of owner of
copyright]. All rights reserved• eg. © 2015 John Doe
Moral Rights:• Rights an author
retains over the integrity of a work
• Moral rights can be waived but cannot be assigned
• eg. Snow v, Eaton Centre Ltd.
Trade Secret:• Indefinite intellectual property protection by keeping it
a secret.• Requirements:
• Not easily reverse engineered;• Strict limits on number of individuals with access to
the information; and• Strict controls over information to maintain
confidentiality.• Risks:
• If the Trade Secret is inadvertently disclosed, no legal protection exists; and
• 3rd parties who file a patent application which covers the information gain control.
Patent:• Full disclosure of
your invention in return for a period of exclusivity (20 years) & geographically limited monopoly to practice your invention.
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International Filing Timelines:
Simple or Complex?• How many types of IP exist?• Patent• Copyright• Trademark• Trade Secret• Industrial Design
Context for a Prior Art Search:• Patent: patentable subject mater
(composition of matter, method but not an idea), new, utility and non-obvious.
• Trademark: A new mark must not introduce confusion with an existing mark.
• Copyright: Must be an original work.
Considerations:Why Search:• Important part of your IP Strategy• Know your competition• Due diligence for your investors• Information for your patent counsel• Identify trends/market validation• Identify partners, potential licensees, potential
marketing/manufacturing contacts
Considerations:• 18 Month blackout period• Strategic company decision to not search*
Information you can Obtain:• Owner/Assignee• Inventors• Technical Details• Examination documents• Prior art citations (backwards and
forwards)• Age of a patent (years of life remaining)• International jurisdictions• Administrative status• Family applications
Resources:• CIPO - www.cipo.gc.ca• USPTO (Regular) – www.uspto.gov • USPTO (PAIR) -
http://portal.uspto.gov/pair/PublicPair• WIPO -
https://patentscope.wipo.int/search/en/search.jsf
• EP(espacenet) - http://worldwide.espacenet.com/
• Google Patents - www.google.com/patents
Public Disclosure…so What?• Limited grace period to file a patent
application in certain jurisdictions (eg. 1 year in N. America, Australia and Mexico; 6 months in Japan).
• Lose all other International patent rights thereafter.
• Significant as European rights lost.
How do Intellectual Property Considerations Impact my Research?
Standard Research Tool - Restrictions:• ATCC:
• Use of material is subject to the terms of the ATCC MTA: … for research purposes only in Purchaser’s/Investigator’s laboratory only…Purchaser shall not distribute, sell, lend or otherwise transfer to a person or entity not party to this MTA the Biological Material…without ATCC’s prior written agreement…any Commercial Use of the Biological Material is strictly prohibited http://www.atcc.org/en/Documents/Product_Use_Policy/Material_Transfer_Agreement.aspx
• WiCell :• UW-Madison entity which distributes stem cell material.• No commercial use rights granted• www.wicell.org
Software, Digital Rights and Educational Material:• Ensure right to use material (have contractor(s),
employees, students assign rights)• Control dissemination of code• Open source considerations• Apps• Reproduction and fair use rights
Software and Open Source Licenses:• Open Source Initiative (www.opensource.org)• General Public License (GPL), Lesser GPL, Appache
License, Berkeley License, etc.• License terms apply when software is “distributed”• Attribution, endorsement, liability, right to distribute
are usually addressed• GPL-type licenses “infect” other software:
• combining GPL source code with your source code means the new code falls under the GPL license;
• GPL requires distribution of source code for free and grant of rights to all users “copyleft”; and
• Difficult to commercialize IP licensed under GPL
Dealing with 3rd parties
Confidentiality Agreement (CDA):• Provides assurances that “Confidential
Information” will not be disclosed to another party.
• Defines:• the Information;• the Use of the Confidential Information;• the Ownership;• Period of Use and Confidentiality; and• Governing Laws and Jurisdiction.
Material Transfer Agreement (MTA):• Ownership, Modifications and derivatives made
by the recipient;• Use of the Material by the Recipient, cost
recovery;• Confidentiality of information, publication
restrictions;• Rights to inventions and use of research
results;• Protect IP or valuable know how; and• Protect institutions from legal liability as a result
of the use of the Material or any results obtained.
Sponsored Research Agreement:• Remember the overhead!
• Option to license IP;• Ownership of IP (background and foreground IP);• Describe deliverables;• Define scope of project and payment, ownership
of equipment purchased; and• Dispute resolution provisions.
License:• License manages the relationship between licensor
and licensee:• Geographic location• Exclusive or non-exclusive• Product, print, design, etc.• Financial consideration • Milestone payments• Reporting requirements• Dispute resolution• Reps and warrants, limitation of liability,
indemnification
Employees and Contractors:Contractors:• ownership of IP (assign copyright, patents, etc.)• Describe deliverables (ensure contractors assign
rights)• Define scope of project and payment• Dispute resolution provisions
Employees:• ownership of IP • Non-compete clause
IP Strategy Development
What is an IP Strategy?• A series of decisions and methods designed to
maximize the contribution of intellectual property to achieving business objectives.• Take inventory of intangible assets and IP;• Know the IP and IP strategy of competitors;• Reflect on the best way to maximize the
positive impacts of IP on revenues, competitiveness and reputation; and
• Communicate with employees, business partners and investors.
Business Objectives – (1, 3 and 5 years)?• Location: which countries/markets do you want to
manufacture, sell, establish or grow in?• Products/Services: what must you develop to remain
competitive?• Resources Needed: technologies (in-license or
internally develop?), skills necessary to help achieve objectives?
• Funding: what sources do you have/need access to in order to realize your objectives?
• Partnerships: (business, legal, technical, financial) will be needed to realize your objectives?
• Commercialization: How do you plan to monetize your IP (out-license, sell, JV, strategic alliance, spin-off, franchise, public domain)?
Do you have an IP Strategy?• Do you conduct prior art searches and analyze
Freedom to Operate?• Do you have/require existing licenses to 3rd party
IP in order to practice your IP?• Does your IP strategy require/could it benefit from
multiple IP rights protection – patent, trademark, copyright, and industrial design?
• How does your business monitor for infringement of its IP, What is your enforcement strategy?
• Is selling or licensing your IP part of your business objectives?
Internal IP Analysis:• What IP exists within your Company -
know how, secrets, patents, trademark, copyright, industrial design, databases, customer lists, etc.?
• Do you have internal or external counsel?• What has been applied/not applied for? • Have any rights issued? • Are any rights currently being prosecuted?
Internal Management of IP:• Do you have an IP manager:• handle interactions with external parties,
manage your IP rights portfolio, etc.• Do you have an IP policy and are your
employees aware of it?• Company ownership of employee IP; • how new inventions are disclosed and
protected internally; and • how employees protect business secrets at
conferences and meetings with 3rd parties.
Are You Aware of Your Competitors IP Strategy?
• Do you conduct competitive intelligence searches of IP databases to see what IP rights your competitors are filing, and in which countries?
• Do you examine your competitors’ products or services to see if they make use of your IP rights?
Possible IP Strategies:• Do not file any IP protection – put into the public
domain; focus on 1st mover advantage, build brand loyalty and customer base.
• Protect technical aspects – seek patent protection on technical aspects key to product base, ability to shut competitors out.
• Focus on Brand Value – file TM and/or Copyright. Build value through brand recognition.
• Combination of IP rights – dependent on product, budget and sector.
• File protection for offensive purposes – aggressively enforce rights against competitors.
• File protection for defensive purposes – rely on rights should competitors infringe.
Resources:• www.cipo.gc.ca• Global Affairs Canada – Trade Commissioners:• *Canadian SME Gateway to China
− www.youtube.com/channel/UCN8VX6Y4OIaJ_-xPJWA3PqQ− http://tradecommissioner.gc.ca/world-monde/sme_gateway_china-portail-pm
e-chine.aspx?lang=eng
• Step-by-step guide to exporting - http://tradecommissioner.gc.ca/exporters-exportateurs/guide-exporting-guide-exportation.aspx?lang=eng
• Global Value Chains - http://tradecommissioner.gc.ca/gvc-cvm/gvc-cvm.aspx?lang=eng
• Protecting your IP in Export Markets - www.canadabusiness.ca/eng/page/2680/
Contact:Ian BellActing Manager, Regional Operations, Canadian Intellectual Property OfficeE: [email protected]: 604-666-5684www.cipo.ic.gc.ca
CIPO Information Line: [email protected]
John Thomson Case Study:• Can the invention be protected as a Trade
Secret? What are the costs and benefits of this option?
• Why did Ms. Jefferies warn him not to discuss with others?
• How can John determine if his invention is patentable?
• How should John approach his patent strategy?
• Are there other IP rights available?• What are the main commercialization options
and considerations for John?