Intellectual Primer For Small Business oct 2011

Enterprise Toronto Small Business Forum Intellectual Property: A Primer for Small Businesses Presented by: Rubsun Ho [email_address] @rubsun October 18, 2011

What’s a legal session without a disclaimer?
The information provided in this presentation represents a general overview and understanding of intellectual property issues. It is not intended to be used as legal advice. Any application of the contents of this seminar in the context of a specific business should entail further legal consultation and consideration.
© 2011 Cognition LLP

About Cognition
Founded in recognition of the fact that traditional legal services model was too expensive for startups and growth companies
Virtual model means lower overhead and lower rates
Former In House lawyers (e.g. Canadian Tire, RIM, Nortel, Sun Microsystems, etc.) who also practiced on Bay St (e.g. Gowlings, Stikemans, Oslers)
32 lawyers in Toronto & Ottawa

Intellectual Property A 15 Minute Overview
Employment and Contractor Issues
Contractual Relationships
Trademarks
Patents
Copyright

You Have an Idea...
“ A couple of friends and I are going to develop some software in our free time”
“ I can’t quit my job because I’ll still need the income while we get our software off the ground”

IP Issues in Employment
One of the first due diligence checks is to examine the chain of IP ownership
Generally, an employer owns IP created by an employee in course of employment
Copyright Act says copyright created by employee in the course of employment is owned by employer
Employment agreements tend to have very broad assignments of IP to employers, especially if a related business and/or if using the employer’s “tools”
Don’t burn any bridges with old employer – you may need their signoff in the future

You Decide to Incorporate
“ Going Rogue Inc.”
We design and market software and applications to make individuals incompetent and unfit for public office.

You Decide to Hire Some Consultants © 2011 Cognition LLP
Unless otherwise agreed, default position with a contractor is that the contractor owns the IP
Ensure you have a written agreement where contractor assigns ALL IP rights to your company (including all derivative rights) and waives moral rights.
Be careful of disclosing confidential information to consultants, especially trade secrets.
Ensure that the consultant isn’t really an employee in disguise, or your company will be liable for statutory deductions and fines

You Secure Some Funds and Hire Employees
Employment agreements should explicitly reserve IP rights to the employer
Agreement needs to be signed PRIOR to start of employment
Some employment agreements may ask an employee to list any pre-existing IP he or she owns
Ensure that employee doesn’t use any IP appropriated from previous employer
Watch for Non-competes

Your Software Gets Traction…
… and you find an organization that loves the incompetence software and is willing to distribute your product to the mass market
1 st Step: NDA
Ensure that it is mutual
Pay attention to definition of confidential information – does it need to be marked?
Check to ensure that confidential info is destroyed or returned on termination
Watch for “residuals” clauses

Your Software Gets Traction…
… and you find an organization that loves the incompetence software and is willing to distribute your product to the mass market
2 nd Step: Commercial Agmt
Anything customized? Who owns IP?
Beware IP Indemnities
Ensure that they are responsible for actions of their own employees and subcontractors in maintaining confidentiality

You’re Ready for Product Release
You decide that a great product name for your incompetence software is “ Misunderestimated DX”
However, a trademark search discloses that W Inc., a giant in the political incompetence industry, already uses the mark “Misunderstimate”
While W Inc. does not produce software, because it is such a leader in the incompetence space, your product may be confused with their organization.

Trademarks
Trademarks: words, logos or symbols that identify your products or services and distinguish them from those of others.
Should be distinctive and not descriptive or it may be objected to
Must be in use to maintain registration
Search www.uspto.gov and www.ic.gc.ca (as well as NUANS search)
You develop trademark rights just from usage in advertising and selling the related product or service
Mark any usage with a TM or SM
Registration is not necessary, but gives you rights across the country, can give indefinite ownership, allows enforcement over social media channels (e.g. Twitter) and provides clearer ownership ®
Ensure that you develop and enforce trademark usage guidelines
Registration - $1500 - $2500 plus more for international

You Decide You Need a Patent
Everyone is telling you that you need a patent to raise financing.
You’ve heard that W Inc. has a number of patents how to be incompetent.
You think you have a unique method to make people incompetent, and don’t want competitors copying your methodology.

Patents
A patent is a temporary right, granted by a governmental body, that gives the holder a limited right to exclude others from selling or offering a similar invention.
The invention has to be useful, novel (i.e. innovative) and non-obvious.
Typically lasts for 20 years.
Could take 4-5 years to be granted.
Can be used for offensive or defensive purposes.

Patents
Cost: $10K - $25K, plus $5K+ for each extra country
Cost of a patent infringement suit: $2M to $5M
Prior art search: www.uspto.gov
Don’t always know what has been filed but not yet published
In US/Canada: one year from disclosure of invention to file for patent. In Europe, you can’t file after invention has been disclosed.
Canada: first to file. US: first to invent (until March 2013).
Provisional patent: establishes filing date and gives you 12 months to amend it. Cost: $3K to $5K

Your Company is Growing Rapidly
Your developers are stretched thin. Thankfully, there is all kinds of open source code available to help them work faster
Marketing is on a tear, pushing out YouTube videos and various multimedia campaigns.
You’ve found a great new image to promote your product.

Copyright
Copyright is a form of protection allowing the owner of the rights in a work to prevent others from copying, displaying or performing the work.
The work must be original.
Absent a contractual arrangement, the author owns the copyright (an employer is deemed the author of any work created by an employee)
Registration is not necessary, but can be helpful.
Use of copyright notice not necessary but helpful:
(C) [Year of first publication] [Owner]

Copyright
Copyright doesn’t protect the idea, but the expression of the idea.
Open source software is still subject to copyright and must be licensed
Any music and images used for promotional purposes is likely subject to copyright and must be licensed.
Century 21 Canada Limited Partnership v. Rogers Communications Inc . – Zoocasa found liable for scraping content from Century 21 website and reproducing it

Thank you. www.cognitionllp.com Rubsun Ho [email_address] 416-348-0313, ext. 102 rubsunho @rubsun

Intellectual Primer For Small Business oct 2011

by Cognition LLP on Oct 19, 2011

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Intellectual Primer For Small Business oct 2011 — Presentation Transcript