A Basic Primer for those interested in valuing IP- provides a survey of the legal tools and a summary of when they can be applied

1. Mining Intellectual Property: The
Key to Maximizing Core Value
in knowledge based industries
Andrea Rush, LLM.
Patent and Trade-mark Agent
Heenan Blaikie, Toronto
arush@heenan.ca

2. Preamble
This presentation will consider the role of legal counsel in “IP Mining” - valuation of
intellectual property, especially in the knowledge based sectors. Careful scrutiny may
determine that a company owns or licenses one or more forms of intellectual property
rights. They are: patents, industrial designs, trade marks and copyright.
Context is everything- whether determining who owns the property, what it is, where the
risks are, or the value. For example, certain subject matter- business methods – may not
be readily patentable in Canada although protectable in other countries in which a
corporation carries on business.
Owners define commercialization potential. Individuals, their employers, independent
consultants, joint venture partners, and others may collaborate to commercialize the
intellectual property. The roles of legal counsel are primarily identification, protection and
enforcement so that value can then be quantified by other professionals.
arush@heenan.ca

3. INTRODUCTION

4. What is Intellectual Property?
Content of the human intellect deemed to be unique
and original and to have marketplace value—and thus
to warrant protection under the law. Intellectual
property includes but is not limited to ideas;
inventions; literary works; chemical, business, or
computer processes; and company or product names
and logos. ... [Microsoft Computer Dictionary, 5th
Edition]
Patents, Trade-marks, Copyright, Industrial Designs
arush@heenan.ca

5. Types of IP Recognized Under
Canadian Law
Intellectual property refers to creations of the mind:
inventions, literary and artistic works and symbols,
names, images and designs used in commerce. These
rights are “property” in the sense that they are based
on the legal right to exclude others from using the
property and in that ownership of the rights can be
transferred. The rights are “intellectual” in the sense
that they protect intangible subjects, usually arising
out of some form of human creativity.
arush@heenan.ca

6. PATENTS
and
INDUSTRIAL DESIGNS

7. What is a Patent?
Provides the owner (patentee) with exclusive right (monopoly)
to prevent others from making, using and selling an “invention”
for a fixed period of time
Negative right only – may be subject to other rights
Monopoly limited to jurisdiction covered by the grant (a U.S.
patent is not enforceable in Canada)
Term of monopoly is 20 years from the filing date
granted in Canada on first person to file basis
For: a product or process that provides a new way of doing
something or offers a new technical solution to a problem,
typically resulting in a vendible product
Functional aspects eg construction of a corkscrew
arush@heenan.ca

8. What Can I Patent?
Protection available for almost any new, useful and
“unobvious” method or apparatus
absolute novelty in Canada, subject to one year grace
period for inventor-derived public disclosures
obviousness imposes requirement of “inventive” effort
Patent protection not available in Canada for computer
programs (per se), business methods, methods of
medical treatment and higher life forms
other jurisdictions may be more progressive
arush@heenan.ca

9. What is an “invention”: Section 2
Patent Act
“invention” means any new and useful* art, process,
machine, manufacture or composition of matter, or
any new and useful improvement in any art, process,
machine, manufacture or composition of matter.
-criteria: novelty, utility, statutory subject matter, non-
obviousness/inventive ingenuity.
-economic result must be produced:

10. Patentable Subject Matter
-the invention may be embodied in equipment or
apparatus
-medical diagnostic methods
-protein, vaccine and lower life forms such as bacteria
and virus
-method of ameliorating the adverse effects of age
-apparatus for medical treatment

11. Non-patentable subject matter
-natural phenomena, laws of nature, scientific
principles;
-computer programs if the discovery involved is a
mere method of calculation;
-method of medical treatment;
-professional skills and methods;
-printed matter producing only an artistic, intellectual
or literary result;
-human conduct or mental steps
-higher life forms

12. Who Owns a Patent?
Typically, employer is the owner of the patent
inventor may be owner if invention not created in the
course of employment
independent contractor may be owner if employer did
not contribute inventive effort
written contract recommended to avoid later disputes
Rights can be assigned or licensed in whole or in part
arush@heenan.ca

13. How Do I Get a Patent?
process initiated by filing application with Canadian
Intellectual Property Office (administrative agency)
must describe invention in sufficient detail to allow a
person of ordinary skill to implement it
must describe a preferred mechanism for practicing
the invention
must define the monopoly rights desired (patent
claims)
final form of patent claims is negotiated between the
patentee and a Patent Office Examiner
legal document

14. What do I file with CIPO?
Rule 94(1) of the Patent Rules:
(a) a petition
(b) an abstract
(c) a sequence listing (Par. 111(a) of the Patent Rules
(d) a copy of a sequence listing in computer readable
form (Par. 111(b) of the Patent Rules
(e) a claim or claims
(f) any drawing referred to in the description
(g) appointment of agent/ associate agent/rep.

15. The patent application:
A) Abstract
B) Description (text and drawings)
C) Claims
arush@heenan.ca

16. Abstract : Summary in 150 words
Sample:
A heart valve with an annular valve body defining an orifice and
having a plurality of struts forming a pair of cages on opposite
sides of the orifice. A spherical closure members is captively
held within the cages and moved by blood flow between open
and closed positions in check valve fashion. A slight leak or
backflow is provided in the closed position by making the orifice
slightly larger than the closure member. Blood flow is
maximized in the open position of the valve by providing a
convex profile in the orifice-defining surfaces of the body. An
annular rib is formed in a channel around the periphery of the
valve body to anchor a suture ring used to secure the valve
within the heart.

17. Description
(a) title of the invention
(b) the technical field
(c) the background art that is known
(d) a description of the invention in sufficient detail to
explain the technical problem and its solution
(e) a description of the figures in the drawings
(f) at least one mode for carrying out the invention
(g) a sequence listing

18. Ownership and Registration
Inventor as first owner
Exception: employer as owner if invention made in the
normal course of employment
A transfer can be made at any time beginning at the
date of invention, and until the patent expires (term)
Rights may be assigned in whole or in part, dividing
the rights by content, territory and time
There may be multiple owners of co-existing rights in a
patent/ copyright, but generally not in a trade-mark.

19. What is it an Industrial Design ?
provides the owner with exclusive right (monopoly) to prevent
others from making, using, advertising and selling an article
embodying the owner’s design, or a design confusingly similar
with the owner’s design
gives owner the exclusive right to use and to exclude others
from using
monopoly limited to jurisdiction covered by the grant (a U.S.
design registration is not enforceable in Canada)
term of monopoly in Canada is 10 years from the date of
registration
granted in Canada on first person to file basis

20. What Can I Register as an
Industrial Design?
Industrial Design protection is available for almost any
new and original shape applied to an article
protection does not extend to functional aspects of an
article
application for registration in Canada must be filed
within one year from first date of public disclosure of
the design

21. Who Owns an Industrial Design?
Typically, employer is the owner of the design
author of design may be owner if “good and valuable”
not consideration paid
written contract recommended to avoid later disputes
Rights can be assigned or licensed in whole or in part
arush@heenan.ca

22. How Do I Get an Industrial Design?
Process initiated by filing application with Canadian
Intellectual Property Office
Must provide complete visual representation of
finished article
Effectively no negotiation in Canada
Typically 1 to 2 years to obtain registration in Canada

23. TRADE-MARKS and COPYRIGHT

24. What is a Trade-mark?
Words, designs, sounds(?), smell (X)
Used – goods/ services
Purpose- to distinguish

25. Trade-marks: What Doesn’t Work?
Confusing
Descriptive
Name/ surname
Adopted by a Public Authority

26. Trade-marks: User as Owner
Use by Applicant
Use by Predecessor of applicant
Use by Licensee
Registration without Use

27. Trade-marks: The Registration
Process
Optional
Identify Applicant
Describe wares and services
Identify first use date
File/ Advertise/ Register/ Renew: 15

28. What is Copyright?
Literary (books, software, databases?)
Dramatic (plays, ballet, film)
Artistic (aesthetic/ functional)
Music (with or without melody)
arush@heenan.ca

29. Copyright: What Doesn’t Qualify?
Ideas (vs. expression)
Database compilations
Features Dictated by Function

30. Copyright: Creator as Owner
Author (s)
Employer
Joint
Collective

31. Copyright: The Registration Process
OPTIONAL
Identify author/ assignee
Identify the work by title
Attach the work to assignment
Advantages: presumptions
(impact on transfer and damage awards)

32. Q&A
arush@heenan.ca