securing your intellectual property

9
SIR Conference April 2, 2016 Securing Your Intellectual Property Douglas B. Thompson Thompson Cooper

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Page 1: Securing your intellectual property

SIR Conference April 2, 2016Securing Your Intellectual

PropertyDouglas B. Thompson

Thompson Cooper

Page 2: Securing your intellectual property

Search for your Idea• USPTO.gov – United States Patent Database

• CIPO.gc.ca – Canadian Patent Database

• Both sites include links to other online patent databases

• An “ugly” part of the patenting process is that searching is often hit and miss

Page 3: Securing your intellectual property

PUBLIC DISCLOSURE

• Destroys rights in most countries and starts a 12 month time clock for protection in Canada and U.S.

• Protect yourself with non-disclosure agreements

• When non-disclosure agreements no longer practical file an “informal” or “provisional” patent application

Page 4: Securing your intellectual property

Provisional Patent Filing• Better to file than to wish you had

• Canada and the U.S. both allow you to file an “informal” or “provisional” patent application

• You have 12 months to file a more formal patent application claiming priority from your original filing

Page 5: Securing your intellectual property

U.S. Position on Intervention Radiology• CLASS 128, SURGERY

• Methods of treatment of the living body and apparatus used in the inspection and treatment of diseases, wounds, and other abnormal conditions of the bodies of humans and lower animals.

Page 6: Securing your intellectual property

Cdn Position on Intervention Radiology• Canadian Manual of Patent Office Practice (MOPOP)

• A method of medical treatment is not patentable. Methods that involve performing surgery on the human or animal body are not patentable, whether the effect of the surgery is therapeutic or not.

• Must focus, therefore, on medical devices and diagnostics

Page 7: Securing your intellectual property

First to File• Patent system works on first to file

• Cannot patent an invention disclosed by someone else before you filed

• Prior patents and prior publications anywhere in the world are relevant

Page 8: Securing your intellectual property

“Obviousness”• An invention that is new and useful, may still be rejected if the Patent

Office views it as being “obvious”

• An invention is “obvious” if it merely combines features that are can be found in two or more existing patents

• An “ugly” part of the patent process involves dealing with disagreements as to what is and is not “obvious”

Page 9: Securing your intellectual property

Questions?Douglas B. ThompsonThompson Cooper LLP201, 1007 Fort StreetVictoria, BC V8V 3K5

Phone: (250) [email protected]