Intellectual Property Strategies
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Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
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Intellectual Property Strategies
- 1. 1 Intellectual Property May 24, 2016 Speaker: Ian Bell, Acting Manager, Regional Operations
- 2. 2 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”
- 3. Forms of Intellectual Property: • Patent • Copyright • Trademark • Trade Secret • Industrial Design • Integrated Circuit Topography • Plant Breeder Rights 3
- 4. 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. 4 Apple, Inc.: Reg’n No. 156454 Herman Miller. Inc. (2004): Reg’n No. 100297 “Task Chair”
- 5. 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. ® 5
- 6. 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 • Protection is automatic on both published and unpublished works.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 6
- 7. 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. 7
- 8. 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. 8
- 9. Patent: • Full disclosure of your invention in return for a period of exclusivity (20 years) & geographically limited monopoly to practice your invention. 9
- 11. Simple or Complex? • How many types of IP exist? • Patent • Copyright • Trademark • Trade Secret • Industrial Design 11
- 12. 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. 12
- 13. 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* 13
- 14. 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 14
- 15. 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 15
- 16. 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. 16
- 17. How do Intellectual Property Considerations Impact my Research? 20
- 18. 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 21
- 19. 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 22
- 20. 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 23
- 21. Dealing with 3rd parties 24
- 22. 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. 25
- 23. 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. 26
- 24. 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. 27
- 25. 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 28
- 26. 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 29
- 28. 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. 31
- 29. 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)? 32
- 30. 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? 33
- 31. 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? 34
- 32. 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. 35
- 33. 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? 36
- 34. 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. 37
- 35. 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-pme- 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/ 38
- 36. Contact: Ian Bell Acting Manager, Regional Operations, Canadian Intellectual Property Office E: ian.bell@canada.ca P: 604-666-5684 www.cipo.ic.gc.ca CIPO Information Line: 1-866-997-1936 cipo.contact@ic.gc.ca 39
- 37. Case Study 40
- 38. 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? 41
Editor's Notes
- Difference between IP and Innovation.
- Patent, TM, Copyright and Industrial Design are the predominant forms of IP protection - particularly Patents. Plant Breeders Rights protect new varieties of plant species. CFIA handles plant breeder rights under the Plant Breeders’ Rights Act. Integrated circuit topography protects the 3-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs. Trade secrets have value (eg. Coke, KFC), but no formal protection exists. – only as good as your ability to keep your secret secret.
- Must request international filings within 6 months of initial filing. Registration is required in order to enforce your rights. Application must be filed within 1 year of its first publication any where in the world. Be aware of solely relying on Industrial Design protection. It should be viewed in the context of an overall IP strategy. Protection is specific to the design (image), so it is possible for competitors to design around your industrial design protection. Cannot register an idea, method of construction, materials used in the construction of a product, the function of an article. CA Filing fee $400 (plus $10/page in excess of 10 pages). Maintenance fee due ~5 years. Search of “Nike” in CIPO db returns >2,500 ID registrations. In fashion design, design patents are difficult to obtain because many apparel designs are re-workings and not new - don’t meet requirement for “new and unobvious”.
- Protection lasts for 15 years, and is renewable as long as the mark is in use. Mark must be recognizable and must be in use. Cannot register marks such as: names or surnames (eg. John Doe), clearly descriptive marks (eg.”sweet” for ice cream or “Juicy” for apples), “deceptively mis-descriptive” marks (eg. Air express for a ground courier or “sugar sweet” for candy sweetened with artificial sweetener), places of origin, words in other languages (eg. Gelato for ice cream), words or designs that are confusing with a previously registered mark, prohibited marks (bear resemblance to an official mark (government), obscene, scandalous or immoral also prohibited. Examiners looking at whether the mark looks or sounds like another and whether they suggest similar ideas and whether the trademarks are used to market similar goods or services. Filing fee $250, reg’n $200, issuance $35 Represent not only the good and services, but also the reputation of the owner. Ordinary mark: consists of words, sounds, designs or a combo of these used to distinguish the goods or services of one person from another. Certification Mark: used by an organization or individual and licensed to others for the purpose of identifying goods or services that meet a defined standard – eg. Woolmark design. Distinguishing guise (“Trade Dress”): comprises the shaping of goods or their containers or a mode of wrapping or packaging goods, which distinguishes them as being produced by a specific individual or firm. Eg. Triangular shape of the Toblerone bar box. Coke bottle [Must be using at time of filing. Required to show the public recognize the packaging] The shade has become known as “Tiffany Blue” and is registered as a trademark in the United States (Registration No. 2,359,351). UPS TM’d the color brown for their uniforms and delivery vehicles CA TMA528,998 and TMA528,999; “Certification” marks eg. Wool mark. Dilution: In Canada see s. 22 of the Trademark act. No person shall use a trademark in a manner that is likely to have the effect of depreciating the value of the goodwill attached thereto. Often seen with the use of a famous mark in relation to a different product. Not required to mark a product, however let’s people know the mark is registered. Must use the mark or it can be expunged from the Register (must not be used for 3 years). Discuss the difference between registered v. non-registered mark. Registration provides the filer with exclusive rights to use the mark in the jurisdiction they file in (prima facie evidence of your ownership of the mark). You are not required to register a mark. Using a mark for a period of time (unregistered) can establish your ownership under common law. In a dispute, the registered owner does not need to prove ownership, the onus is on the challenger. Canada joined the Madrid protocol, Singapore Treaty and Nice Agreement – Revisions to the Trademark Act enacted in 2014 brings Canada more in-line with international norms, streamlining procedures (file in one jurisdiction but seek protection in multiple jurisdictions) and reduces costs. Fashion Design: Use trademarks to distinguish designs by incorporating logos or marks in the fashionable item (eg. Burberry plaid). Issue: must show design identifies source of the fashion article. Once design becomes popular, other companies will use design on their goods since design itself not actually protected. In US, tailoring and structural aspects of a fashion article not protected under copyright law (original pattern or screen print may be).
- Exclusive right to produce, reproduce, publish, or perform an original literary, artistic, dramatic or musical work. Software code is an important aspect to mention re. copyright. [copyright protection exists for the expression (writing of the code itself) not the functionality of the code.]. 50 year term is in Canada. This may vary in other jurisdictions. Emphasize that marking (as per the example) is not required in Canada. Emphasize that while copyright exists automatically upon creation, the creator can file at minimal cost to have the copyright registered. Registration provides presumptive proof of ownership. Filing fee $50 and $65 for registration CR as it relates to clothing design: Apparel not listed in copyright req’s Copyright: most applicable for design. Work only need be independently created by an author and possess creativity. US, CR can’t protect manner a garment is assembled and tailored. In US, fabric design (pattern on fabric) is CR protectable but dress design (graphically set forth shape, style, cut, dimensions) are not protectable. Only way to protect design via CR is if the design can be identified separately from and is capable of existing independently of the utilitarian aspects of the article. Eg. courts construed as physical or conceptual separability. Physical – design elements can be removed from the item and separately sold without affecting articles function – eg. Fabric design EU allows CR to protect dress designs. In CA, CR limited by s.64, but all not lost, 64(3) protects an artistic work as a TM or for material that has a woven or knit pattern (http://www.iposgoode.ca/2009/05/does-fashion-need-copyright-protection/) http://www.cardozoaelj.com/2014/09/19/protecting-fashion-a-comparative-analysis-of-fashion-design-copyright-protection-in-the-u-s-and-europe/
- An interesting aspect of IP to know about, especially as it relates to their work. The Snow v. Eaton Centre Ltd. case is a classic Canadian example for Moral Right’s enforcement. Waiver is a common employment clause.
- Trade secrets are not formally registered, therefore risk of no protection if secret becomes public. Emphasize that in order to maintain a Trade Secret, onerous requirements must be enforced in order to ensure it remains a secret.
- Interesting question to ask students to see how many types of IP they think are associated with the bottle of coke [answer: all] Patent on bottle cap fixation, Copyright on text, Trademark on bottle design and Coke logo, Trade Secret on coke recipe, Industrial Design on bottle shape. Important for students to recognize the overlapping nature between the various IP rights and therefore the importance of a sound IP strategy.
- This is an important aspect to discuss given the implications. More comprehensive list of grace-period companies (http://www.patentable.com/invention-disclosure-and-patent-grace-periods-how-disclosing-your-invention-before-filing-a-patent-application-can-severely-limit-your-ability-to-obtain-a-patent/) It is important to mention poster sessions and social media as venues where presentation in this format can be considered public disclosure and impact IP rights. NOTE: It is important to ensure students don’t feel that they can’t present at poster sessions or discuss their research with colleagues and classmates, however it is something they need to be aware of (examine and balance risks). Institutional IP policy plays a role here *Also very important to discuss having their thesis held from immediate publication at their university’s library. This can be done via their Faculty of Graduate Studies. Many times they follow protection strategies but forget to hold the thesis publication (typically 12-18 months) and this disclosure damages IP. If enabling then public disclosure can bar patent filing, including: Public talks, classroom presentations* Formal printed publications Internet publications, blog’s, social media Poster presentations Thesis Defence/Publication Request a publication hold with Faculty of Graduate Studies In camera thesis defence*
- It is important to mention poster sessions and social media as venues where presentation in this format can be considered public disclosure and impact IP rights. NOTE: It is important to ensure students don’t feel that they can’t present at poster sessions or discuss their research with colleagues and classmates, however it is something they need to be aware of (examine and balance risks). Institutional IP policy plays a role here *Also very important to discuss having their thesis held from immediate publication at their university’s library. This can be done via their Faculty of Graduate Studies. Many times they follow protection strategies but forget to hold the thesis publication (typically 12-18 months) and this disclosure damages IP.
- Discuss importance of good record keeping practices, especially for inventorship disputes – (Lab books will be used to determine a date of invention)
- Example to drive home “use” obligations for research reagents they use everyday. ATCC is a major provider of cell lines. In order to use their material, you must agree to the terms of their MTA. By opening the package, you agree to the terms (“shrink-wrap license”). WiCell is WARF’s (UW-Madison) vehicle for commercializing and transferring various stem cell lines. To access material, a signed MOU and simple letter agreement (SLA) must be signed by the recipient’s institution.
- Students may be involved in developing educational material, or may develop material at a future point in their career. Intent of this slide to inform them of things they need to consider when developing educational material, software, etc. What is the university's policy on reproduction (photocopying, access to journal articles, etc.) for use in teaching?
- It is important for researchers to know about potential encumbrances/obligations for software they may use with an associated open source license. Stress the importance of documenting and monitoring licenses being used and what the terms for each license are. This is extremely important when coding, given implications if you include open source code into software you intend to use commercially.
- CDA and NDA can be used interchangeably. Important for students to understand this in the context of information they may receive in the course of their degree and which they need to treat as confidential, as well as how to use a CDA for their own research IP if they send it to a 3rd party outside their institution and who is therefore not covered by the institutions confidentiality provisions. Their schools tech transfer office will advise and facilitate getting the necessary agreement in place.
- CDA and NDA can be used interchangeably. Important for students to understand this in the context of information they may receive in the course of their degree and which they need to treat as confidential, as well as how to use a CDA for their own research IP if they send it to a 3rd party outside their institution and who is therefore not covered by the institutions confidentiality provisions. Their schools tech transfer office will advise and facilitate getting the necessary agreement in place.
- An MTA will define who owns the material, how the material can be used, how modifications are dealt with, restrictions on the use of the material, prevention of further transfer of material, etc. Important for students to understand in the context of material they use in the lab (especially what they get from reagent companies – eg. Cell lines from ATCC, CMV promoter or GFP probe) or for material they send out. Their schools tech transfer office will advise and facilitate getting the necessary agreement in place.
- CDA and NDA can be used interchangeably. Important for students to understand this in the context of information they may receive in the course of their degree and which they need to treat as confidential, as well as how to use a CDA for their own research IP if they send it to a 3rd party outside their institution and who is therefore not covered by the institutions confidentiality provisions. Their schools tech transfer office will advise and facilitate getting the necessary agreement in place.
- Searching Competitive intelligence, prior art, FTO Commercialize License patent rights in exchange for monetary compensation Company creation Form a company based on the protected IP Investor diligence Knowledge Translation Put into the public domain without patent protection in order to advance scientific knowledge Discuss strategy behind each option and why one may choose to pursue a specific strategy over another. Cross-licensing, patent pools are other means of commercialization or knowledge transfer (KT) With KT, it is hard to get interest from a commercial entity to use the information (eg. pharma will adopt) if no IP exists. Some granting agencies may have a KT obligation (within reason and respecting IP pursuits (eg. Within a certain period of time of research results being generated, the investigator must upload the results to a database maintained by the funder for access by other researchers or the larger research community)) as a means of advancing KT.
- www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03493.html