Power of Patents, November 16, 2011


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The Power of Patents: Adding Value Through Effective Patent Strategies, presented November 16, 2011

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Power of Patents, November 16, 2011

  1. 1. The Power of Patents: Adding Value Through Effective Patent Strategies Wednesday, November 16, 2011MONTRÉAL OTTAWA TORONTO CALGARY VANCOUVER NEW YORK CHICAGO LONDON BAHRAIN AL-KHOBAR* BEIJING SHANGHAI* blakes.com*Associated Office Blake,Cassels & Graydon LLP
  2. 2. Seminar IndexThe Power of Patents: Adding ValueThrough Effective Patent Strategies Wednesday, November 16, 2011 TABPresentation Slides .............................................................................1Speaker Profiles .................................................................................. 2 • Anil Bhole • Sheldon Burshtein • John Orange • Brett Slaney
  3. 3. The Power of Patents: Adding Value ThroughEffective Patent Strategies November 16, 2011 Demonstrating the Value of Patents Presented by: Anil Bhole 1
  4. 4. Patent Essentials• Up to 20-year monopoly / right to exclude• Various filing strategies• National / regional protection• For inventive products and processes• Not just for “big” innovations• Opportunities to sell, license, settle litigation, debt finance, attract funding The Value of a Strong Portfolio• Mosaid: $590-million• Nortel: $4.5-billion• Motorola Mobility: $12.5-billion 14 12 10 8 6 4 2 0 Mosaid Nortel Motorola 2
  5. 5. The Value of a Strong Portfolio• Average value per patent: $590,000 to $750,000 800000 700000 600000 500000 400000 300000 200000 100000 0 Mosaid Nortel Motorola The Value of CertaintyRIM v. NTP Result• NTP alleged infringement • RIM share price soared • RIM market cap• RIM paid to NTP $612M increased $600M 3
  6. 6. Attracting Venture Capital Berkeley Patent Survey (2008) All V.C.- V.C.-backed Companies with patents 39% 82% Average # of patents held (all companies) 4.7 18.7 Average # filed by company (holders only) 8.1 15.8 Average # from founders (holders only) 1.9 2.5 Average # acquired (holders only) 2.1 4.2* Graham, Merges, Samuelson, Sichelman; High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey; 2009 Attracting Venture CapitalMIT Sloan Study (2010)86.3% of companieswith highly rated IPpositions are venturecapital winners.Highly rated companiesare over six times morelikely to be winners thanlosers. * Hazdima, Bockmann, Butler; IP in early-stage commercial and investment success; IAM Magazine, March/April 2010 4
  7. 7. The Canadian DisconnectInnovation leader: Canada 5thin scientific articles citedCommercialization laggard:Canada 12th in patents+Revenues from University R&D:1.14% (compare to U.S. at 5%)Patent growth far behindemerging nations + triadic patents; annual average 2004-2008 Building Value Through Effective Patent Strategies: A Case StudyPresented by: Brett Slaney and John Orange 5
  8. 8. Company Goals• Maintain core competency in oil and gas sector• Maintain competitive advantage with superior technology: – recognize innovations – protect innovations as key company assets• Promote use of technology in other areas: – co-operative development – licensing – patent acquisition The Technology Image Image Image Acquisition Processing Acquisition r So na nar So Granite Bed OIL 6
  9. 9. Cost Timeline Per Invention Invention Year 1 Year 2 Year 3 Year 4 $A $B $C $D $C $A $B $D 1 Search, patent application Update patent application, file National applications, Examination costs, renewals preparation formal translations, applications, examination formalities costs, renewals How Costs Can Build Inventions Year 1 Year 2 Year 3 Year 4 1 $A $B $C $D 2 - $A $B $C 3 - - $A $B 4 - - - $A $A $A Total $B $B $C $A $C $A $B $D* Assuming 1 invention per year 7
  10. 10. Patent Landscape Algorithms Field Equipment Oil Exploration Using Sonar Single Sonar Array Our Technology Action Plan• Refine budget• Establish decision points• Establish internal procedures for documenting and evaluating new innovations• Establish internal procedures for controlling the flow of information• Periodic review of existing portfolio to clear deadwood, identify crown jewels, and match protection to business activities• Find champion for other areas to develop added value 8
  11. 11. Comments From a Transactional Perspective Presented by: Sheldon Burshtein Comments From a Transactional Perspective• Gathering rights• Co-ownership Issues• Defensive issues• Offensive issues 9
  12. 12. Gathering Rights• Employees• Independent contractors, subcontractors• Collaborators• Academic, medical and research institutions• Government and sponsored grants• Copyright and other IP rights• Ownership versus income stream Co-ownership• Rights to use, license, assign, enforce, remedies• Different rules in different jurisdictions, even within Canada• Default position• Inevitable standoff• Avoid co-ownership or deal with issues contractually 10
  13. 13. Defensive Issues• Patent is right to exclude, not to exploit• Searches for rights of others• Licensing in to avoid infringement• Licensing, cross-licensing, purchasing for complementary technology Offensive Issues• Licensing out for different channels, markets, territories• Licensing out to settle infringement issues• Unlimited options, flexibility 11
  14. 14. Questions 12
  15. 15. Anil Bhole Associate, Toronto Office Blake, Cassels & Graydon LLP Direct 416-863-4342 Facsimile 416-863-2653 anil.bhole@blakes.comProfileAnil Bhole is an Associate in the Intellectual Property Group. His practice encompasses all aspects ofintellectual property (IP) law, primarily focusing on patent and trade-mark prosecution, industrial design,copyright, and various information technology law matters. Anil assists his clients to obtain protection forinnovations, including for mobile devices, mobile applications, search systems, wireless signals, VLSItechnologies and cleantech.Anil is particularly enthusiastic about assisting start-up companies to develop IP strategies and pursueprotection for key aspects of their technologies. He has also assisted established companies to formulatebest practices for managing their IP portfolios and leveraging IP assets.Anil also works closely with the next generation of innovators and entrepreneurs. He has conducted guestlectures at the University of Waterloo and worked with entrepreneurial students to assist them incommercializing their technologies.Prior to joining Blakes, Anil was employed by another Toronto-based national law firm where he workedextensively with small to medium-sized technology companies.Anil was called to the Ontario Bar in 2008 and is a registered Canadian and United States patent agentand registered Canadian trade-mark agent. He holds a bachelor of applied science in computerengineering and, prior to studying law, gained experience in the high-tech, automotive, financial andmedical devices sectors. As an engineer in the medical devices industry, he was heavily involved in IPlitigation and in ensuring compliance with various standards and regulations from ISO, Health Canada,and the U.S. Food and Drug Administration.EducationRegistered Canadian Patent Agent - 2010Registered United States Patent and Trademark Agent - 2010Registered Canadian Trade-Mark Agent - 2009Admitted to the Ontario Bar - 2008LL.B., Osgoode Hall Law School - 2007
  16. 16. Sheldon Burshtein Partner, Toronto Office Blake, Cassels & Graydon LLP Direct 416-863-2934 Facsimile 416-863-2653 sb@blakes.comProfileSheldon Burshtein is a Partner of Blake, Cassels & Graydon LLP. He practises in the Toronto office as amember of the Intellectual Property, Information Technology, Life Sciences, Sports & Entertainment,Franchising, and Alternative Dispute Resolution Groups.Qualifications. Sheldon received his B. (Civ.) Eng. from McGill University and is a registered professionalengineer in the province of Ontario. He also has two law degrees, his civil law B.C.L. and his common lawLL.B., from McGill University. He is a member of The Law Society of Upper Canada and has been certifiedby The Law Society as a Specialist in Intellectual Property (Patent, Trade-mark and Copyright) Law.Sheldon is registered as a patent agent and as a trade-mark agent in Canada. He is also registered topractise before the United States Patent and Trademark Office on behalf of Canadian applicants. Sheldonhas been accredited as a Certified Licensing Professional.Practice. Sheldon practises exclusively in the fields of intellectual property and technology. His workincludes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks,copyright, industrial designs and other forms of intellectual property. His practice emphasizes commercialtransactions involving intellectual property and information technology, such as licensing and othertransactions involving pharmaceuticals and life sciences, electronic commerce, and other technologies, aswell as franchising. He is significantly involved in counselling on intellectual property matters.Leader. Sheldon is a leader of the Intellectual Property and Technology bar. Law Business ResearchsThe International Whos Who of Patent Lawyers has identified him as "the most frequently namedCanadian" patent lawyer and The International Whos Who of Trademark Lawyers consistently ranksSheldon among the 10 top trade-mark lawyers in the world. World Trademark Review 1000: The DefinitiveGuide to Trademark Legal Services said Sheldon is "uniformly outstanding; his ability to translate hisunparallel knowledge of trademark law into concrete, practical advice is exceptional." ManagingIntellectual Property has referred to him as "the foremost copyright expert in Canada." PLC Cross-borderIntellectual Property Handbook has selected him as the leading commercial intellectual property lawyer inCanada. The International Whos Who of Business Lawyers refers to him as an "excellent attorney" and a"leader in his field."Canadian Recognition. Sheldon has been continuously listed in The Lexpert/American Lawyer Guide tothe Leading 500 Lawyers in Canada from inception. He has been continuously rated among the mostfrequently recommended lawyers for "Intellectual Property" in The Canadian Legal Lexpert Directory frominception, and is also recognized in the "Computer and Information Technology" and "Technology"categories. He has been continuously listed in The Best Lawyers in Canada in the "Intellectual Property"and "Technology" categories since inception. Sheldon was named in the Whos Who Legal: Canada 2010special report for both "Patents" and "Trademarks." He is also referenced in the Canadian Whos Who. Hehas received a Special Recognition of Achievement Award from the Intellectual Property Institute ofCanada.
  17. 17. International Recognition. Sheldon has been continuously ranked for "Intellectual Property" by ChambersGlobal: The Worlds Leading Lawyers for Business since inception. He has been named in Law BusinessResearchs The International Whos Who of Business Lawyers and in both its "Patent" and "Trademark"categories. He has been honoured as an "Intellectual Property Luminary" by the publishers of PatentWorld, Trademark World and Copyright World. Sheldon has been selected by Mondaq as one of the"Worlds Leading Intellectual Property Lawyers." He has been named an "Experts Expert" by WorldTrademark Review. Sheldon has been listed in the World Trademark Review 1000: The Definitive Guide toTrademark Legal Services since inception. He has been ranked as one of the leading "IntellectualProperty" experts in the PLC Cross-border Intellectual Property Handbook since inception. Sheldon hasbeen ranked in the IAM Licensing 250: The Worlds Leading Patent and Technology Licensing Lawyerssince inception. He has been referenced in the European Counsel Life Sciences Specialist 500 of the"Top-Ranking Life Sciences Lawyers Worldwide." Sheldon has been continuously named by Practical LawCompany among the leading "Life Sciences Lawyers" since inception. He has been ranked by PracticalLaw Company as one of the leading "E-Commerce and Information Technology Lawyers." He has beennamed in the "Global Counsel Lawyer Super Leagues." Sheldon has been selected by Practical LawCompany as one of the worlds leading intellectual property lawyers. He is listed in PLC Which Lawyer? inCanada for multiple categories.Patents. Sheldon acts for numerous businesses in various industries in the management, prosecution,licensing and enforcement of patent rights. He has authored a book on Canadian patent law. He has beenconsistently chosen one of the "Worlds Leading Patent Experts" by Managing Intellectual Property sinceinception. Sheldon has been consistently recognized in The International Whos Who of Patent Lawyers byLaw Business Research since inception, and has been identified as the most frequently named Canadian.Sheldon received the Marie F. Morency Memorial Prize awarded by the Intellectual Property Institute ofCanada for the highest national standing in the patent agents drafting examination.Trade-marks. Sheldon represents numerous clients in brand counselling and the protection, licensing andenforcement of trade-mark, trade dress and trade name rights, as well as in domain name issues. He hasauthored a multiple-volume book and co-authored two other books on trade-mark law. He has beenconsistently chosen one of the "Worlds Leading Trademark Law Experts" by Managing IntellectualProperty since inception. Sheldon has been named an "Experts Expert" by World Trademark Review. Hehas been selected one of the "Worlds Top 50 Trade Mark Law Practitioners" by Managing IntellectualProperty. The same publication selected Sheldon one of the "Worldwide Leading 25 Trade-mark Experts."He has consistently been selected as one of the "Most Highly Regarded Individuals Global - Trademarks"in The International Whos Who of Trade Mark Lawyers published by Law Business Research. In 2010, hewas again identified as one of the worlds top 10 by that publication.Copyright. Sheldon advises a major broadcaster, a television station, a major newspaper, bookpublishers, major recording companies and others on copyright protection, transaction and enforcementissues. He has co-authored a book on Canadian copyright law and has also been involved in draftingsections of the Copyright Act. He has been consistently selected in the Managing Intellectual Propertysurveys as one of the "Worlds Leading Copyright Law Experts" from inception and was said to be "theforemost copyright expert in Canada."Domain Names. Sheldon advises numerous clients on domain name strategy, transactions andproceedings. He led a Blakes team in the structuring and set up of the ".ca" domain name registry. Sheldonhas authored a multiple-volume book on Internet trade-mark and domain name law. He has been rankedby Practical Law Company as one of the leading "E-Commerce and Information Technology Lawyers."Sheldon has been named in the PLC Cross-border Information and E-Commerce Handbook and wasselected in PLC Which Lawyer? Yearbook in the category of "IT and E-commerce."Licensing, Technology Transfer and Franchising Transactions. Sheldon has been accredited as acertified licensing professional. He has acted in the licensing of various types of intellectual properties in
  18. 18. virtually every industry, and represents major clients in connection with technology and other licensing,franchising and merchandising programs. Sheldon has been involved in transactions involving some of themost valuable Canadian and international intellectual properties. He has been selected by PLC Cross-border Intellectual Property Handbook as the leading commercial intellectual property lawyer in Canada.He has co-authored several books on licensing and on intellectual property and information technology incommercial transactions. Sheldon authors a monthly column on "Licensing Fundamentals" in WorldLicensing Law Report and World Intellectual Property Report. He is ranked in the IAM Licensing 250: TheWorlds Leading Patent and Technology Licensing Lawyers. Sheldon has received an Achievement Awardfrom the Licensing Executives Society USA/Canada.Pharmaceuticals and Life Sciences. Sheldon acts for a number of major international and domesticpharmaceutical companies and has served as a director of one of Canadas largest pharmaceuticalcompanies. He has been referenced in the European Counsel Life Sciences Specialist 500 of the "Top-Ranking Life Sciences Lawyers Worldwide." Sheldon has been continuously ranked among the leadinglawyers in the PLC Cross-border Life Sciences Handbook since inception. He is recommended by PLCWhich Lawyer? in the category of "Life Sciences-Intellectual Property." He has written a regular column inPharmaceuticals Canada.Internet, E-commerce, Information Technology and Social Media. Sheldon acts for a number ofleading Internet e-commerce, information and technology based companies and advises other businesseson those issues, including social media. For example, he led a Blakes team in the structuring and set up ofthe ".ca" domain name registry. Sheldon has authored a multiple-volume book on Internet trade-mark anddomain name law. He has been selected in Law Business Researchs The International Whos Who ofInternet, e-Commerce and Data Protection Lawyers. He has been ranked by Practical Law Company asone of the leading "E-Commerce and Information Technology Lawyers". Sheldon was selected byPractical Law Company as an "Expert in Communications Law." He has been named in the PLC Cross-Border Communications Handbook, the PLC Communications Industry Report and the PLC Cross-BorderInformation Technology and E-Commerce Handbook. He was selected in the PLC Which Lawyer? in thecategory of "IT and E-commerce". He has also been chosen one of the "Personalities in CanadianTechnology".Sports and Entertainment. Sheldon is active on behalf of numerous clients in the sports andentertainment industries. For example, he has acted for most of the major North American professionalsports leagues, a leading sports sanctioning body and several major professional sports teams. He hasrepresented newspaper, book and magazine publishers, major recording companies, and a majortelevision network.Alternative Dispute Resolution. Sheldon serves as an arbitrator and as a mediator. He is a member ofthe panel of IP Neutrals of Canada and the Canadian Panel of Neutrals for the International TrademarkAssociation. He is also a member of the panel of the Intellectual Property Division of National Arbitrationand Mediation and the panel of the Alternative Dispute Resolution Center. Sheldon has authored a bookon domain name arbitration.Books and Articles. Sheldon is an author of several books on Canadian intellectual property law, such asThe Corporate Counsel Guide to Intellectual Property Law (Canada Law Book), Patent Your OwnInvention (International Self Counsel Press), and The Law of Domain Names and Trade-marks on theInternet (Carswell). He has co-authored a book on international trade-mark law and has contributedchapters to numerous domestic and international books on trade-marks, copyright, other intellectualproperty, licensing, merchandising, intellectual property in commercial transactions, intellectual propertydisputes, electronic commerce, as well as pharmaceuticals and biotechnology. Sheldon is the author ofhundreds of articles and papers on intellectual property and technology topics. He authors regular columnsin various publications. He has also spoken often in all of these areas.
  19. 19. Teaching. Sheldon lectures annually at the McGill University/Intellectual Property Institute of CanadaTrade-marks I course and the Copyright course. He is a member of the faculty in the Osgoode Hall LawSchool e-commerce LL.M. program and has been a lecturer in the Osgoode Hall Intellectual PropertyLL.M. program and the Osgoode Hall Intensive Program in Business Law.Organizations. Sheldon is a member of many professional organizations in the legal, intellectual propertyand engineering fields and has chaired and sat on numerous committees in organizations such as theAmerican Bar Association, the Canadian Bar Association, the Intellectual Property Institute of Canada, theInternational Association for the Protection of Industrial Property, the International Trademark Associationand the Licensing Executives Society. He is a past chair of the Toronto Patent and Trademark Group.EducationCertified Licensing Professional - 2008, 2011Certified Specialist, Intellectual Property (Patent, Trade-mark and Copyright) Law - 1994, renewed 1999,2004, 2009Registered Patent Agent, Canada - 1987Registered to practise before the United States Patent and Trademark Office in Patents (CanadianApplicants) - 1987Registered to practise before the United States Patent and Trademark Office in Trademarks (CanadianApplicants) - 1982Admitted to the Ontario Bar - 1980Registered Trade-mark Agent, Canada - 1980Registered Professional Engineer (Ontario) - 1980LL.B., McGill University - 1978B.C.L., McGill University - 1977B. (Civ.) Eng., McGill University - 1974
  20. 20. John Orange Patent Agent, Toronto Office Blake, Cassels & Graydon LLP Direct 416-863-3164 Facsimile 416-863-2653 john.orange@blakes.comProfileJohn Orange is a senior member of the Intellectual Property Group. For more than 25 years, he hasprovided strategic advice on the development and enforcement of intellectual property rights for Canadiancompanies in the mechanical and electrical fields. His professional experience includes involvement in thelicensing program for the compact disc industry, developing IP portfolios and working in the area ofencryption.John has played a leading role in developing formal patent training courses around the world. He hastrained a number of entrants to the profession and lectures at the Patent & Trademark Institute of Canadapatent agency course at McGill University.John has obtained international recognition as a leading IP professional. He is listed as a patent expert inthe Guide to the Worlds Leading Patent Experts published by Legal Media Group. He is past president ofthe International Federation of Intellectual Property Attorneys (FICPI), an international organization havingclose working relationships with international establishments such as the World Intellectual PropertyOrganization, the World Trade Organization, the European Patent Office, and the European Commission,as well as the national patent offices.John is a fellow of the Intellectual Property Institute of Canada and has served on its council. He ispresident of the Communications Committee of FICPI, a member of the International Association for theProtection of Intellectual Property (AIPPI), and co-chair of the Special Committee on Patent Agents for theAmerican Intellectual Property Law Association. He became a registered patent agent in 1979 andqualified as a trade-mark agent in 1981. He is qualified to practise before the U.S. Patent and TrademarkOffice.EducationRegistered Trade-mark Agent (Canada) - 1981Registered to practise before the United States Patent and Trademark Office - 1980Registered Patent Agent (Canada) - 1979Intermediate Examinations of Chartered Institute of Patent Agents - 1973B.Sc. (Mechanical Engineering), Lanchester Polytechnic, Coventry, England - 1970
  21. 21. Brett Slaney Patent Agent, Toronto Office Blake, Cassels & Graydon LLP Direct 416-863-2518 Facsimile 416-863-2653 brett.slaney@blakes.comProfileBrett Slaney is a Patent Agent with the Intellectual Property Group. His areas of expertise include patentdrafting and prosecution, portfolio management, and opinion work regarding patentability, infringement,and validity. Bretts practice focuses on patent-related issues in the electrical, software and mechanicalfields, with particular emphasis on multidisciplinary systems. His professional experience includesservicing clients in the data security, wireless telecommunications, automotive electronics, fishinginstrumentation, process automation, consumer product, and software industries.Brett also has an active practice in industrial designs and design patents, as well as litigation support andpatent issues arising during corporate transactions.Brett has been a member of the Intellectual Property Institute of Canada (IPIC) since 2004, the TorontoIntellectual Property Group (TIPG) since 2005, the American Intellectual Property Law Association (AIPLA)since 2006, and FICPI (The International Federation of Intellectual Property Attorneys) since 2006.Brett is active in professional committees in both FICPI and IPIC related to software and business methodpatents. He has also served as a guest lecturer at the engineering undergraduate level regarding patentissues and is actively involved in educating and training engineering students in the field of patent lawthrough a co-operative program with the University of Waterloo.Brett qualified on the 2005 patent agents examinations and was registered as a Canadian patent agent in2006. He was also registered to practise before the United States Patent & Trademark Office on behalf ofCanadian-based inventors in 2006.EducationRegistered Canadian Patent Agent - 2006Registered to practise before the United States Patent and Trademark Office in Patents (CanadianApplicants) - 2006B.A.Sc. (Hon.) (Systems Design Engineering), University of Waterloo - 2004