MaRS Best Practices: IP Best Practices for ICE Companies - Henry Ohab
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MaRS Best Practices: IP Best Practices for ICE Companies - Henry Ohab

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Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent ...

Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your IT, communications and entertainment (ICE) company.

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MaRS Best Practices: IP Best Practices for ICE Companies - Henry Ohab MaRS Best Practices: IP Best Practices for ICE Companies - Henry Ohab Presentation Transcript

  • gowlings.com The Power of Original Thought Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  • gowlings.com The Power of Original Thought Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London MaRS Best Practices_ Intellectual Property Henry OhabThursday, February 24, 2011
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London What Is Intellectual Property ? •  Patent •  Trademark •  Copyright •  Industrial Designs •  Trade Secret
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Intellectual Property Protection Patent Protects new & useful concepts; strong protection rights Trademark Protects the source & reputation of the goods Industrial Design Protects ornamental features of products Copyright Protects artistic work including drawings, compilations, manuals, etc. Trade Secrets Protected to the extent kept confidential. No recourse against independent development.
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Patents •  Provides the right to exclude others from making, using, and selling a product or process during the term of the patent •  Awarded in exchange for a fully enabling disclosure of the “best mode” of practicing the invention •  Term of the issued patent is 20 years from date of filing •  Patent rights are territorial
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Why Patent? •  Competitive advantage to prevent copying •  Blocking patents as barrier to market entry •  Royalty stream •  Attract investment •  Deter lawsuits from competitors •  Negotiating for possible cross-Licensing •  Increase value of the company for acquisition
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Deciding What to Patent •  As a business asset, value depends on other factors beyond just technical merit •  Is the invention so novel that broad claims are likely to issue? •  Blocking - effectively preclude others from copying? •  Difficult for competitors to “design around”? •  Can infringement be easily detected?
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Where to File ? Value is increased if protection is obtained in multiple jurisdictions •  Where is the market for the product? •  20 year term •  Growing Economies •  Where is the product manufactured? •  Prevent manufacture of product in strategic locations •  Import/Export Regulations •  Where are my competitors? Where is the R&D market? •  Which jurisdictions are strong in enforcing patent rights? •  Importation •  Policing •  Litigation/Damages
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London What is Involved? •  Inventor interview •  Drafting the patent application •  Prosecution of the application
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Inventor Interview •  Public disclosure or other possible bars apply ? •  Determine inventorship •  Understand the invention
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Be Aware of Potential “Bars” to Patenting •  Public disclosure, public use or offer for sale may be a bar to obtaining a patent •  1 -year grace period in US; Europe and most other jurisdictions require absolute novelty •  Any of “bar” actions start the clock ticking •  Use Non-Disclosure Agreements with appropriate description •  Using NDAs also avoids the potential for the other party filing for a patent on the same or similar ideas •  File the patent application early
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Determine Inventorship •  Who contributed to the subject matter of the claims ? •  What is their relationship with the company, e.g. employee, contractor •  When was the invention created? •  Joint inventors – anyone who contributed to at least one claim •  Naming the correct inventors is important – a patent that fails to identify the true inventors may be held invalid and unenforceable
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Ownership •  Increased value when IP is owned by a single entity   Employment Agreements in place before IP is generated   Assignment Agreements before research is done by third party   Joint Collaborations – IP considerations •  All ownership of IP should be determined before the research is conducted and before patents are filed.
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Prior Art Searching? •  No duty to search for prior art •  But must disclose relevant prior art of which you’re aware •  Searching patent publications prior art may have implications related to willful infringement for patents found, since considered “on notice”
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Drafting the Patent Application •  Understand the invention both technically and in its commercial context •  Prepare a sufficient and enabling disclosure; do not characterize the prior art •  Provide claims of varying scope; less vulnerable to prior art cited during prosecution and even after issuance, and thereby highly enforceable •  The claims of the issued patent define the legally enforceable scope of the patentee’s rights •  Draft different types of claims (product, system, method) as appropriate to the invention
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Patent Applications •  U.S. Provisional Application Consider filing if a public disclosure/ sale is imminent Should be as detailed as possible to support claims once converted Avoid unless absolutely necessary (Patent Cooperation Treaty) PCT Application International Application holding a filing date and place in nearly every country in the world 30 month deadline for selecting jurisdictions in which to obtain protection Patentability report by IEA. •  European Application Single examination for EU Member Countries If granted, can select countries for validation
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London First Filing •  Typically, Canadians file first in US •  Can file a Provisional application for lower fees while preserving early “priority date”; convert to Regular application within next 12 months; delays examination, however. •  The Specification of the Provisional application as filed must provide support for claims once converted •  File early to take advantage of the presumption that first to file is the first inventor
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Prosecution •  A well prepared specification and claims can make prosecution “cleaner” •  Be aware of File Wrapper Estoppel in US •  Duty of candor in US applies during entire pendency of application
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Maneuverability - Pending Applications Ability for owner to modify the scope of the claims to increase the value of the patent. •  Amendment to claims must be supported by the specification as originally filed or must be reasonably inferred from the specification as originally filed. •  Allows for amending the claim scope of the pending application. •  Amending claims of allowed patent very much more restricted.
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Post-Filing Timeline Originating application filed 12 Months – PCT Application/Regular Application 18 Months – Publication of First application 30 Months – National Phase Entry of PCT Application
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Post-Filing Strategy Timeline for selecting jurisdictions: •  1 year from priority date – regular filed application •  30 months from priority date – PCT application Delay in time allows for: •  Funding •  Confirming Market Acceptance •  Research/Test Results •  Partnering/Selling
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London U.S. Considerations •  Continuation practice •  Obtain allowed claims to narrow scope and then file continuation patent directed to broader claim scope. Allows patentee to adjust the claims based on actions of competitors. •  Terminal Disclaimers/Double Patenting. •  Continuation-in-Part Applications for improvements.
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Trademarks •  A word, a symbol, a design or any combination thereof used to identify the origin of goods and the customer’s expectation associated therewith •  Standard for infringement: likelihood of confusion •  Actual use can establish rights under common law, but prior registrations may result in infringement of the rights of others outside the limited geographical scope •  Have a search done before investing in a particular name/design •  15 years, renewable indefinitely
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Copyright •  Automatically vests with the author of the work •  Protects expression not underlying functionality •  Prevents copying, not independent creation •  Long term life of author plus 50 years (70 in US) •  Can be registered for a nominal fee •  Registration allows damages for infringement •  Infringement: any unauthorized copying, distribution, performance or display of a work
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Industrial Designs •  Cover the shape, configuration and ornamentation of an article •  Not function •  Typically useful for consumer products of high volume that may be subject to foreign knock offs. •  Relatively cheap, but provides limited protection, total 10 years available in Canada
  • Montréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London Trade Secrets •  Can be anything the company considers valuable and has not made publicly known •  customer list, product plans •  formulas (Coke) •  manufacturing process (3M post-it notes) •  Must take reasonable measures to protect the confidentiality •  Once disclosed, protection is lost