The Power of Original Thought                                                                                           go...
MaRS Best Practices_ Intellectual Property Thursday, February 24, 2011                                                    ...
What Is Intellectual Property ?   •    Patent   •    Trademark   •    Copyright   •    Industrial Designs   •    Trade Sec...
Intellectual Property Protection   Patent        Protects new & useful concepts; strong protection rights   Trademark     ...
Patents   •  Provides the right to exclude others from making,      using, and selling a product or process during the    ...
Why Patent?   •    Competitive advantage to prevent copying   •    Blocking patents as barrier to market entry   •    Roya...
Deciding What to Patent   •  As a business asset, value depends on other factors      beyond just technical merit         ...
Where to File ?   Value is increased if protection is obtained in multiple jurisdictions   •     Where is the market for t...
What is Involved?   •  Inventor interview   •  Drafting the patent application   •  Prosecution of the applicationMontréal...
Inventor Interview   •  Public disclosure or other possible bars apply ?   •  Determine inventorship   •  Understand the i...
Be Aware of Potential “Bars” to Patenting   •  Public disclosure, public use or offer for sale may be      a bar to obtain...
Determine Inventorship   •  Who contributed to the subject matter of the claims ?   •  What is their relationship with the...
Ownership   •  Increased value when IP is owned by a single entity       Employment Agreements in place before IP is gene...
Prior Art Searching?   •  No duty to search for prior art   •  But must disclose relevant prior art of which you’re      a...
Drafting the Patent Application   •  Understand the invention both technically and in its      commercial context   •  Pre...
Patent Applications   •  U.S. Provisional Application            Consider filing if a public disclosure/ sale is imminent ...
First Filing   •  Typically, Canadians file first in US   •  Can file a Provisional application for lower fees while      ...
Prosecution   •  A well prepared specification and claims can make      prosecution “cleaner”   •  Be aware of File Wrappe...
Maneuverability - Pending Applications   Ability for owner to modify the scope of the claims to     increase the value of ...
Post-Filing Timeline                                 Originating application filed                12 Months – PCT Applicat...
Post-Filing Strategy   Timeline for selecting jurisdictions:   •       1 year from priority date – regular filed applicati...
U.S. Considerations   •  Continuation practice       •  Obtain allowed claims to narrow scope and then file          conti...
Trademarks   •  A word, a symbol, a design or any combination      thereof used to identify the origin of goods and the   ...
Copyright   •    Automatically vests with the author of the work   •    Protects expression not underlying functionality  ...
Industrial Designs   •  Cover the shape, configuration and ornamentation of      an article   •  Not function   •  Typical...
Trade Secrets   •  Can be anything the company considers valuable      and has not made publicly known         •  customer...
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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 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

  1. 1. The Power of Original Thought gowlings.comMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  2. 2. MaRS Best Practices_ Intellectual Property Thursday, February 24, 2011 Henry Ohab The Power of Original Thought gowlings.comMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  3. 3. What Is Intellectual Property ? •  Patent •  Trademark •  Copyright •  Industrial Designs •  Trade SecretMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  4. 4. 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
  5. 5. 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 territorialMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  6. 6. 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 acquisitionMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  7. 7. 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
  8. 8. 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/DamagesMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  9. 9. What is Involved? •  Inventor interview •  Drafting the patent application •  Prosecution of the applicationMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  10. 10. Inventor Interview •  Public disclosure or other possible bars apply ? •  Determine inventorship •  Understand the inventionMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  11. 11. 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 earlyMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  12. 12. 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 unenforceableMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  13. 13. 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
  14. 14. 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
  15. 15. 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 inventionMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  16. 16. 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 validationMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  17. 17. 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 inventorMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  18. 18. 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 applicationMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  19. 19. 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
  20. 20. 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 ApplicationMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  21. 21. 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/SellingMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  22. 22. 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
  23. 23. 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 indefinitelyMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  24. 24. 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 workMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  25. 25. 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 CanadaMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
  26. 26. 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 lostMontréal | Ottawa | Kanata | Toronto | Hamilton | Waterloo Region | Calgary | Vancouver | Moscow | London
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