IP Management - Entrepreneurship 101 (2012/2013)

IP Management: Creating Value by Protecting Knowledge-‐Based Assets November 21, 2012 Nathaniel Lipkus, Matthew Powell & Ashlee Froese

Understanding Intellectual Property

What is Intellectual Property? www.gilbertslaw.ca

Canadian IP: By the Numbers The percentage of Canadian science or 20 technology businesses that have sought IP protection of any kind The percentage of R&D expenditures by Canadian universities that are captured as 1.14 revenues down the road (compare to 5% for the United States) Billions of dollars in net licensing revenues that 4.5 Canadian entities pay to foreign entities because Canadians are buyers not sellers of IP Canada’s rank out of 24 developed nations on an 17 OECD innovation scale (despite being 7th in R&D) www.gilbertslaw.ca

Types of IP Protection Patent Trade Trademark Secret Your Business Design Copyright www.gilbertslaw.ca

IP = Value Capture $12.5 Billion ÷ 17,000 Patents $735K per Patent $4.5 Billion ÷ 6,000 Patents $750K per Patent Brand Value: $77.8 million (US) www.gilbertslaw.ca

Patents www.gilbertslaw.ca

Patents A patent is used to control how an advantage of a particular invention reaches the customer. Exercise control by forcing competitor to: -‐  Eliminate advantage from their offering altogether; -‐  Provide advantage only under license; or -‐  Find a different way to achieve advantage. www.gilbertslaw.ca

Eureka? Invention means: -‐  New, useful, non-‐obvious machine, manufacture, composition of matter, art or process, or a new useful, non-‐obvious improvement in one of these things. www.gilbertslaw.ca

The Right Stuff Patentable Not Patentable Process for recursively A digital image of a sunset (See: sharpening an image in a digital copyright) camera. Process for arbitrating between A stylistic wave icon displayable con_licting keystrokes on a smart on a smart phone (See: trade phone keypad using word mark or industrial design) rankings. Process for streaming digital A feature length digital _ilm (see: video to a wireless device. copyright) Recessable, hinged legs on a Layout of keys on a computer computer keyboard keyboard (See: industrial design) Hand sanitizer formulation. Attractive hand sanitizer bottle (See: industrial design) www.gilbertslaw.ca

Shhh … Patent laws can be strict. Any of the following things, if done prior to _iling can result in an invalid patent: -‐  Public disclosure of the invention; -‐  Use of the invention; -‐  Sale of the invention; -‐  Offering the invention for sale. Different countries have different requirements. BEST PRACTICE: _ile for patent _irst. www.gilbertslaw.ca

Patent Preparation and Filing 1.  Understand inventorship and ownership •  Who has a right to be named an inventor? •  Who has a right to own the patent? 2.  Prepare patent application •  Prepare description, drawings and claims. 3.  File patent application •  Paperwork + patent application + fees in each country. •  Use fee-‐deferral techniques when patenting in more than one country. 4.  Negotiate With Examiner(s) (“Prosecution”) •  Will have to wait awhile to hear from Examiners (2-‐3 years sometimes). •  Use progress with one Examiner to speed up examination elsewhere. 5.  Receive Granted Patent www.gilbertslaw.ca

Should I Just Keep It Secret? Patent Trade Secret Details of invention published by Details of invention can be kept patent of_ice after 18 months. secret forever. Can stop others even if they come Cannot stop others if they come up with the invention up with the invention independently. independently. For inventions that would not be For inventions that would be hard for a competitor to _igure extremely dif_icult for a out. competitor to _igure out. Example: Using collets for Example: Method of applying bonding shaped substrates to a forces to a semiconductor submount of a semiconductor. substrate for extremely fast bonding of light emitting diodes. www.gilbertslaw.ca

Branding www.gilbertslaw.ca

Trade-‐marks Ultimately, the trade-‐mark represents the reputation, quality and expertise of a company. Nike Inc. www.gilbertslaw.ca

What Could Be a Trade-‐mark? Traditional Trade-‐marks •  Single word SUBWAY •  Group of words BURGER KING •  Group of numbers 967-‐1111 •  Slogan DUDE YOU RE GETTING A DELL •  Design (with words) •  Design (without words) Non-‐Traditional Trade-‐marks Three-‐Dimensional Colors Distinguishing Guise Sound www.gilbertslaw.ca

The Sword and the Shield www.gilbertslaw.ca

The Good, the Bad and the Forgettable Suggestive CoinedDescriptive Generic www.gilbertslaw.ca

How to Best Protect your Brand Obtain Trade-‐mark Registrations •  Formalized protection of business asset •  Increase value of your company •  Registration certi_icate is evidence of ownership •  Exclusive use •  Rights are country-‐wide •  Renewable registration periods •  Access to Federal Court judgments •  Springboard for international protection •  Other avenues (domain name disputes, social media etc.) www.gilbertslaw.ca

The Living Brand •  Use proper marking and ownership notices •  Avoid genericization •  Use trade-‐mark properly •  Consistently use the trade-‐mark •  Continue to use trade-‐mark properly •  License properly •  Police vigilantly •  Audit the wares/services •  Renew, renew, renew www.gilbertslaw.ca

Ponder this… What do: POST-IT escalator ASPIRIN KLEENEXzipper plasticine BAND-AID have in common? www.gilbertslaw.ca

Let s Get Social Ø  192 million domain names registered Ø  126 million online blogs Ø  27.3 million daily tweets Ø  350 million people on Facebook Ø  90 trillion emails sent in 2009 www.gilbertslaw.ca

The Online Assumption Assumption Reality Brand Inc. .ca .jp .us .eu .xxx .museum BRAND.com .net .info twitter/BRAND Facebook/BRAND .mobi .co .uk .me www.gilbertslaw.ca

Managing Intellectual Property www.gilbertslaw.ca

Good Housekeeping Know Your IP •  Use invention disclosure forms to capture inventions rather than rely on notebooks. •  Use spreadsheets to track brands, inventions, patent applications, patents, trademarks, copyrights, trade secrets Ensure IP Ownership •  Ensure IP being created at the instruction of the company by employees, outside contractors etc. is owned by the company •  Establishing formal, written agreements early reduces costly disputes later •  Maintain a repository of employment agreements, outside contracts, nondisclosure agreements, supply agreements Conduct Periodic IP audits www.gilbertslaw.ca

IP Hurdles vs. IP Barriers Survey the IP Avoid barriers Protect your own Landscape Overcome hurdles IP along the way Who owns background IP? Act early! What patents/designs Can you license? Cross-‐could block you? license? Partner? Co-‐exist? What businesses are Can you invalidate branding like yours? blocking IP? Any big players to plan for? Any ways to insure? www.gilbertslaw.ca

Apple/Samsung The latest $1 billion damages award v. Samsung Sanctions against Apple by UK court Antitrust investigations into Samsung www.gilbertslaw.ca

AIDS in Developing Countries IP Gilead had developed breakthrough ARVs: Viread, Truvada – covered by patents around the world Problem No infrastructure in developing world: 1,000-‐paEent penetraEon (and not for lack of trying) Solu8on 15% developing country license to Indian manufacturers / discounts to wholesalers: led to generic penetraEon of 2.9 million 1/3 of HIV pa8ents treated in developing world take a Gilead drug www.gilbertslaw.ca

Thank You www.gilbertslaw.ca 416 703 1100

IP Management - Entrepreneurship 101 (2012/2013)

by MaRS Discovery District on Nov 23, 2012

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