Intellectual Property: Legal Bootcamp, December 2013

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Presented by James Longwell, Partner …

Presented by James Longwell, Partner
The information in this presentation is for general information purposes only. It does not constitute a legal opinion or other professional advice.

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  • Excellent presentation - thanks very much, James!

    It is a rare occasion that someone goes to the trouble of actually logically organizing a relatively involved subject-matter, thus making it more accessible to everyone - great job, and, very helpful and informative!
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  • 1. Intellectual Property Legal Bootcamp December 2013 Presented by James Longwell, Partner The information in this presentation is for general information purposes only. It does not constitute a legal opinion or other professional advice.
  • 2. Level 1 - INTELLECTUAL PROPERTY OVERVIEW AND NON-DISCLOSURE AGREEMENTS 2
  • 3. Basics: Intellectual Property Intellectual Property (IP): • Rights (limited monopoly) over creations of the mind • Intangible property, not like a car, real estate or a dog • Territorial: register rights with each country where protection is desired • Multiple types of IP with different rules for ownership, registration, etc. 3
  • 4. Basics: Intellectual Property Types of IP Covered in this Presentation: • Patents • Trade-marks • Copyrights • Industrial Designs • Trade Secrets 4
  • 5. Patents What is a Patent? A patent protects an invention: • a new and useful product, composition, apparatus, machine, process, or • improvement thereto 5
  • 6. Patents (Cont’d) What is Patentable? • Can’t patent math or science in the abstract – must have a practical application • Business methods – Federal Court says not prohibited if you can fit into one of the groups – process, system, etc. • Software – as a method/system/product in Canada and most other jurisdictions • Methods of medical treatment and “higher” life forms are NOT patentable in Canada but may be in other jurisdictions 6
  • 7. Patents (Cont’d) Patentability Criteria • An invention is patentable if it is: 7
  • 8. Patents (Cont’d) Practical Tips: • Keep invention confidential prior to filing a patent application • Publication may bar filing, or restrict filing options • Publication includes any non-confidential disclosure • Publication includes any disclosure that is available to the public • For the US, a sale or offer to sell, even if secret, triggers one year clock to file patent application in the US 8
  • 9. Patents (Cont’d) Patent Protection: • Once granted, the patent owner obtains: • the right to exclude others from making, using or selling the invention for a limited time in country of grant • Not a right to practice but to exclude others • May be subject to prior patent rights 9
  • 10. Trade-Marks What is a Trade-Mark? • Slogan: I AM. CANADIAN • Symbol: [CBC] • Word(s): CANADIAN TIRE • Word & Design: [Cuisipro] • Shape: [Coca-Cola bottle] • Distinguishes the products/services of one business from another to indicate the source and/or character/quality 10
  • 11. Copyright What is Copyright? • Protects the expression of an idea, not the idea itself • It is the exclusive right to produce or reproduce an original work • Literary – e.g. software • Dramatic, Musical, Artistic • Copyright is automatic once the work is fixed • e.g. saved or recorded to media • Author is first owner • Exception for works made by employees 11
  • 12. Industrial Design What is an Industrial Design? • Visual features of shape, configuration, pattern or ornament or any combination of those features applied to a manufactured article made by hand, tool or machine • Apple v Samsung – largest ever US patent award APPLE IPHONE DEVICE APPLE US COLOUR GUI MICROSOFT ICON GUI 12
  • 13. Industrial Design (Cont’d) • Key steps to obtaining industrial design protection: • no or recent (within 1 year) public disclosure of the design prior to filing • filing of the application • examination – originality • Some copyright works may also qualify as industrial designs. Copyright may be lost if more than 50 articles are made, therefore register as an industrial design 13
  • 14. Trade Secrets What is a Trade Secret? • Information which is secret and has value to the holder, for example: • know how for technical or business processes: Cadbury Caramilk, formulae for COKE or KFC • an invention before it is made public • financial information (e.g. cost/pricing) 14
  • 15. Trade Secrets (Cont’d) • Impose a duty of confidence on receiving party before sharing, for example, through NDA or implied agreement/ circumstances 15
  • 16. Basics: Intellectual Property Five IP Pitfalls: • Patents – disclosing invention before filing as most countries do NOT provide a grace period • Trade-marks – using your mark improperly • Copyrights – assuming protection extends to the idea expressed • Industrial Designs – assuming copyright applies when more than 50 articles embodying work are made • All IP – failing to deal with ownership of IP when hiring contractors to do development work 16
  • 17. DISCLOSING TRADE SECRETS AND CONFIDENTIAL INFORMATION 17
  • 18. Practical Approaches to Protecting Confidential Information Practical Approaches: • Using phased disclosure of confidential information • Just saying no • Implementing “need to know” policies (internally and externally) • Educating and setting clear expectations for employees concerning confidential information • Use non-disclosure agreements (NDAs) 18
  • 19. LEVEL 2 LEGAL BOOT CAMP Common Challenges That An Early Stage Company Faces As It Grows And Commercializes Its IP: 1. Funding and Financing 2. Licensing Basics 3. Patent And Trade Secret Strategies 19
  • 20. Level 2 – PATENTS - IP STRATEGY 20
  • 21. Overview Strategy: • To File or Not to File • US Provisional vs. US Formal (Non-Provisional) • Where to File? 21
  • 22. Strategy • What is your IP Strategy? 22
  • 23. Strategy • What, when, and where to file must be part of an overall IP strategy for your business and any particular invention • Forms of IP: - Copyright - Patent - Trade-mark - Industrial Design - Trade Secret 23
  • 24. Strategy: To File or Not To File? • Shield • Sword • Valuation • Revenue Cost of typical patent suit in US is $5M-$7M 24
  • 25. Strategy: Where to File? • What is your Business Plan? • Short term: - maximize valuation and opportunity - establish US portfolio, keep other options open • Long term: - Market considerations: • offensive and defensive • Where are you making/using/selling/licensing? • Where are your competitors doing the same? • Prioritize inventions 25
  • 26. Strategy: Where to File? Options for protection in multiple countries: • Priority Application • First application filed for the invention • Typically filed first in largest market (US) • Convention Applications • Second filed application to the same invention • Filed within 12 months of the priority application • File directly with country and/or with PCT Office • Patent Cooperation Treaty (PCT) • Holding mechanism to defer decision to file in specific jurisdictions • File International Phase with PCT Office and then National Phase with specific Patent Offices 26
  • 27. Strategy: Where to File? • Example scenarios: 1Yr 0Yr (12 mths) invent ? first application invent (6 mths) update applications country publish applications 1Yr 0Yr ? (12 mths) first application 1.5Yr (6 mths) 1.5Yr 2.5Yr (12 mths) update applications PCT publish application country applications 27
  • 28. Strategy: US Provisional vs. US Formal • What are the differences between US provisional and US formal (non-provisional) applications? 28
  • 29. Strategy: US Provisional vs. US Formal Formal Provisional - complete application (full description, drawings, claims) - relaxed application content (e.g. no claims, sketches permitted) - formal papers signed by inv. - few formal papers - full government fees - reduced government fees - publication - no publication - examination - no examination - potential 20+ year term - expires in one year - may claim priority to earlier appln. - cannot claim priority to earlier - requires full disclosure of invention - requires full disclosure of invention 29
  • 30. Strategy: US Provisional vs. US Formal • Only claims supported by the provisional application are entitled to the benefit of its priority date • European Patent Office practice generally requires exact descriptive support in provisional application for claim language in formal application • Self-disclosure of the new subject matter before the formal application filing date may jeopardize the available scope of the formal application particularly in jurisdictions where there is no grace period 30
  • 31. Strategy: Costs • What is your IP Budget? 31
  • 32. Strategy: Costs ? invent $$ first application (12 mths) $ update PCT application $$$... (18 mths) country applications 32
  • 33. Strategy: Conclusion • Establish an IP strategy • There is value in uncertainty (e.g., a pending patent application) • PCT keeps options open but at high cost • Why file PCT if you have no intent to go worldwide? • Prioritize inventions: • business plan • patentability • budget 33
  • 34. Thank You James Longwell Partner Toronto Office 416-862-4325 james.longwell@gowlings.com montréal ottawa toronto hamilton waterloo region calgary vancouver beijing moscow london