• Like
Felix Tang Innovate LLP lawTechCamp
Upcoming SlideShare
Loading in...5

Thanks for flagging this SlideShare!

Oops! An error has occurred.

Felix Tang Innovate LLP lawTechCamp



Published in Entertainment & Humor
  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Be the first to comment
    Be the first to like this
No Downloads


Total Views
On SlideShare
From Embeds
Number of Embeds



Embeds 0

No embeds

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

    No notes for slide


  • 1. Lawyers | Patent and Trade-mark Agents MaRS Centre, 101 College Street, #120E Toronto, ON M5G 1L7June 17, 2011lawTechcamp 2011An Open and Non-Traditional Analysis ofIntellectual Property LawFelix Tang, B.A.Sc. (Eng. Sci.), M.A.Sc., LL.B.Lawyer & Engineer
  • 2. Goals● Practical IP information and strategies ● i.e. “Business Strategy Drives IP Strategy”● Future issues to consider? ● i.e. Openness, Sharing, Our digital lives...
  • 3. I. Business Goals● Clearly understand your business goals ● Create value through innovation. ● How do you protect that value?● Phase 1: IP Administration ● Creation of IP assets● Phase 2: IP Management ● Creating economic benefits from IP
  • 4. What is IP?● IP protects the intangible assets of your business ● Brand, inventions, software, know-how● IP used to accomplish strategic goals ● Competitive advantage ● Tick IP box to get funding● Jurisdiction – each country is separate● How to select type of IP protection?
  • 5. When?● Now.● Planning IP strategy now, prevents legal problems that cannot be fixed later.
  • 6. Types of IP● Confidential Information● Copyright● Trade-marks● Patents● Industrial Designs
  • 7. Patents● What is a patent? ● New == novel; not in prior art ● Inventive != obvious ● Subject matter ● First to file (except US)● Why get a patent? ● 20 year right to exclude others ● Monopoly for public disclosure
  • 8. Patent Strategy● Risk: Be careful with disclosures ● Absolute novelty in EU and Asia ● By inventor, 1 year grace period in CA and US ● NDA is ok, but patent application is better.● Risk: cost of enforcement!● Approach patents in stages to manage cash flow● Pro: flexible business tool, offensive and defensive
  • 9. Ownership of IP● Manage ownership of IP ● Agreements from founders, employees, contractors assigning IP to company ● Dont assume that company owns any IP just because you are paying someone!● Be aware of third party rights ● Previous employers ● Universities, technology transfer organizations, government agencies
  • 10. II. Why IP?● What is (was) the policy goal?● Balance?● Registration gives a presumption of rights!
  • 11. What do WE want?● Open SAFE creative life to express, invent, play, make and hack... ● SAFE == not getting sued?● Share == Contribute to the COMMONS● Educate ourselves about IP!
  • 12. Copyright● Shrinking public domain... term is VERY LONG!● Created and applies automatically to all “works”● How to recreate the public domain? ● Use Copyright!
  • 13. License● License == Contract● Contract == an agreement, a tool● Contract to use copyright protected material● Open Source && Creative Commons
  • 14. Patents● Goal: Prevent patent from issuing● How: ANTICIPATION – attack novelty● Practically: PUBLICLY DOCUMENT EVERYTHING ● I dont want anyone to patent it.
  • 15. Trade-marks● “Genericide” == death by a thousand cuts● Not really an issue, even trade dress, unless out of balance or commercial USE● Overzealous demands? Channels of trade is limiting.
  • 16. Open Source Hardware● Interesting issues... copyright + industrial design + trade dress + patents !!!● Copyright applies to practically all the plans to make the hardware. But not the hardware itself.● What about patents? New or existing? Patent pools...
  • 17. Industrial Design● I believe will become more important because of 3D printing.● “design” or “industrial design” means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye;
  • 18. Trolls / NPE● Are you making a lot of $$$?● If not, dont worry too much. ● Actually not true anymore... they like small “weak” targets!
  • 19. Demand Letter● Is a threatening letter BUT...● Be careful. Dont say anything, especially in writing.● “without prejudice”
  • 20. What can I do?● Always negotiate!● Are you infringing? Why? Be honest with yourself.● Be prepared to have your bluff called, if you try to call their bluff. Litigation == EXPENSIVE
  • 21. General Strategy● Marketing and advertising == tell a story that the public understands and relates to● Help create a “Streisand effect”● Dont be intimidated! Dont be naive!
  • 22. Smart Consumer of Legal Services● Big Law == Big clients && Depth && Breadth == premium pricing● Finder (Partner) and Grinder (Associate) ● Grinder is paid ~1 unit to bill ~3 units.● Small firm == Specialized && Lean
  • 23. What can I ask my Lawyer?● Understanding of your business.● Who is doing the work? Estimate? Range?● Breakout bill: work done, hours, who.● Challenge bill: Court Assessment Office
  • 24. Entrepreneurship● if (money < expenses) then {bankrupt}● Professional services is always a trust relationship● Self-education, lowers costs
  • 25. Lawyers | Patent and Trade-mark Agents MaRS Centre, 101 College Street, #120E Toronto, ON M5G 1L7Thank you!Remember: This is information, not legal advice.Felix Tang, Lawyer & Engineerfelix.tang@innovatellp.com@felixstang1.888.433.2030