2. IP
Management:
Creating
Value
by
Protecting
Knowledge-­‐Based
Assets
November
21,
2012
Nathaniel
Lipkus,
Matthew
Powell
&
Ashlee
Froese

3. Understanding
Intellectual
Property

4. What
is
Intellectual
Property?
www.gilbertslaw.ca

5. Canadian
IP:
By
the
Numbers
The
percentage
of
Canadian
science
or
20
technology
businesses
that
have
sought
IP
protection
of
any
kind
The
percentage
of
R&D
expenditures
by
Canadian
universities
that
are
captured
as
1.14
revenues
down
the
road
(compare
to
5%
for
the
United
States)
Billions
of
dollars
in
net
licensing
revenues
that
4.5
Canadian
entities
pay
to
foreign
entities
because
Canadians
are
buyers
not
sellers
of
IP
Canada’s
rank
out
of
24
developed
nations
on
an
17
OECD
innovation
scale
(despite
being
7th
in
R&D)
www.gilbertslaw.ca

6. Types
of
IP
Protection
Patent
Trade
Trademark
Secret
Your
Business
Design
Copyright
www.gilbertslaw.ca

7. IP
=
Value
Capture
$12.5
Billion
÷
17,000
Patents
$735K
per
Patent
$4.5
Billion
÷
6,000
Patents
$750K
per
Patent
Brand
Value:
$77.8
million
(US)
www.gilbertslaw.ca

8. Patents
www.gilbertslaw.ca

9. Patents
A
patent
is
used
to
control
how
an
advantage
of
a
particular
invention
reaches
the
customer.
Exercise
control
by
forcing
competitor
to:
-­‐ Eliminate
advantage
from
their
offering
altogether;
-­‐ Provide
advantage
only
under
license;
or
-­‐ Find
a
different
way
to
achieve
advantage.
www.gilbertslaw.ca

10. Eureka?
Invention
means:
-­‐
New,
useful,
non-­‐obvious
machine,
manufacture,
composition
of
matter,
art
or
process,
or
a
new
useful,
non-­‐obvious
improvement
in
one
of
these
things.
www.gilbertslaw.ca

11. The
Right
Stuff
Patentable
Not
Patentable
Process
for
recursively
A
digital
image
of
a
sunset
(See:
sharpening
an
image
in
a
digital
copyright)
camera.
Process
for
arbitrating
between
A
stylistic
wave
icon
displayable
con_licting
keystrokes
on
a
smart
on
a
smart
phone
(See:
trade
phone
keypad
using
word
mark
or
industrial
design)
rankings.
Process
for
streaming
digital
A
feature
length
digital
_ilm
(see:
video
to
a
wireless
device.
copyright)
Recessable,
hinged
legs
on
a
Layout
of
keys
on
a
computer
computer
keyboard
keyboard
(See:
industrial
design)
Hand
sanitizer
formulation.
Attractive
hand
sanitizer
bottle
(See:
industrial
design)
www.gilbertslaw.ca

12. Shhh
…
Patent
laws
can
be
strict.
Any
of
the
following
things,
if
done
prior
to
_iling
can
result
in
an
invalid
patent:
-­‐ Public
disclosure
of
the
invention;
-­‐ Use
of
the
invention;
-­‐ Sale
of
the
invention;
-­‐ Offering
the
invention
for
sale.
Different
countries
have
different
requirements.
BEST
PRACTICE:
_ile
for
patent
_irst.
www.gilbertslaw.ca

13. Patent
Preparation
and
Filing
1. Understand
inventorship
and
ownership
• Who
has
a
right
to
be
named
an
inventor?
• Who
has
a
right
to
own
the
patent?
2. Prepare
patent
application
• Prepare
description,
drawings
and
claims.
3. File
patent
application
• Paperwork
+
patent
application
+
fees
in
each
country.
• Use
fee-­‐deferral
techniques
when
patenting
in
more
than
one
country.
4. Negotiate
With
Examiner(s)
(“Prosecution”)
• Will
have
to
wait
awhile
to
hear
from
Examiners
(2-­‐3
years
sometimes).
• Use
progress
with
one
Examiner
to
speed
up
examination
elsewhere.
5. Receive
Granted
Patent
www.gilbertslaw.ca

14. Should
I
Just
Keep
It
Secret?
Patent
Trade
Secret
Details
of
invention
published
by
Details
of
invention
can
be
kept
patent
of_ice
after
18
months.
secret
forever.
Can
stop
others
even
if
they
come
Cannot
stop
others
if
they
come
up
with
the
invention
up
with
the
invention
independently.
independently.
For
inventions
that
would
not
be
For
inventions
that
would
be
hard
for
a
competitor
to
_igure
extremely
dif_icult
for
a
out.
competitor
to
_igure
out.
Example:
Using
collets
for
Example:
Method
of
applying
bonding
shaped
substrates
to
a
forces
to
a
semiconductor
submount
of
a
semiconductor.
substrate
for
extremely
fast
bonding
of
light
emitting
diodes.
www.gilbertslaw.ca

15. Branding
www.gilbertslaw.ca

16. Trade-­‐marks
Ultimately,
the
trade-­‐mark
represents
the
reputation,
quality
and
expertise
of
a
company.
Nike
Inc.
www.gilbertslaw.ca

17. What
Could
Be
a
Trade-­‐mark?
Traditional
Trade-­‐marks
• Single
word
SUBWAY
• Group
of
words
BURGER
KING
• Group
of
numbers
967-­‐1111
• Slogan
DUDE
YOU RE
GETTING
A
DELL
• Design
(with
words)
• Design
(without
words)
Non-­‐Traditional
Trade-­‐marks
Three-­‐Dimensional
Colors
Distinguishing
Guise
Sound
www.gilbertslaw.ca

18. The
Sword
and
the
Shield
www.gilbertslaw.ca

19. The
Good,
the
Bad
and
the
Forgettable
Suggestive Coined
Descriptive Generic
www.gilbertslaw.ca

20. How
to
Best
Protect
your
Brand
Obtain
Trade-­‐mark
Registrations
• Formalized
protection
of
business
asset
• Increase
value
of
your
company
• Registration
certi_icate
is
evidence
of
ownership
• Exclusive
use
• Rights
are
country-­‐wide
• Renewable
registration
periods
• Access
to
Federal
Court
judgments
• Springboard
for
international
protection
• Other
avenues
(domain
name
disputes,
social
media
etc.)
www.gilbertslaw.ca

21. The
Living
Brand
• Use
proper
marking
and
ownership
notices
• Avoid
genericization
• Use
trade-­‐mark
properly
• Consistently
use
the
trade-­‐mark
• Continue
to
use
trade-­‐mark
properly
• License
properly
• Police
vigilantly
• Audit
the
wares/services
• Renew,
renew,
renew
www.gilbertslaw.ca

22. Ponder
this…
What
do:
POST-IT
escalator ASPIRIN
KLEENEX
zipper
plasticine BAND-AID
have
in
common?
www.gilbertslaw.ca

23. Let s
Get
Social
Ø 192
million
domain
names
registered
Ø 126
million
online
blogs
Ø 27.3
million
daily
tweets
Ø 350
million
people
on
Facebook
Ø 90
trillion
emails
sent
in
2009
www.gilbertslaw.ca

24. The
Online
Assumption
Assumption
Reality
Brand
Inc.
.ca .jp
.us
.eu .xxx
.museum
BRAND.com
.net
.info
twitter/BRAND
Facebook/BRAND
.mobi .co
.uk .me
www.gilbertslaw.ca

25. Managing
Intellectual
Property
www.gilbertslaw.ca

26. Good
Housekeeping
Know
Your
IP
• Use
invention
disclosure
forms
to
capture
inventions
rather
than
rely
on
notebooks.
• Use
spreadsheets
to
track
brands,
inventions,
patent
applications,
patents,
trademarks,
copyrights,
trade
secrets
Ensure
IP
Ownership
• Ensure
IP
being
created
at
the
instruction
of
the
company
by
employees,
outside
contractors
etc.
is
owned
by
the
company
• Establishing
formal,
written
agreements
early
reduces
costly
disputes
later
• Maintain
a
repository
of
employment
agreements,
outside
contracts,
nondisclosure
agreements,
supply
agreements
Conduct
Periodic
IP
audits
www.gilbertslaw.ca

27. IP
Hurdles
vs.
IP
Barriers
Survey
the
IP
Avoid
barriers
Protect
your
own
Landscape
Overcome
hurdles
IP
along
the
way
Who
owns
background
IP?
Act
early!
What
patents/designs
Can
you
license?
Cross-­‐
could
block
you?
license?
Partner?
Co-­‐exist?
What
businesses
are
Can
you
invalidate
branding
like
yours?
blocking
IP?
Any
big
players
to
plan
for?
Any
ways
to
insure?
www.gilbertslaw.ca

28. Apple/Samsung
The
latest
$1
billion
damages
award
v.
Samsung
Sanctions
against
Apple
by
UK
court
Antitrust
investigations
into
Samsung
www.gilbertslaw.ca

29. AIDS
in
Developing
Countries
IP
Gilead
had
developed
breakthrough
ARVs:
Viread,
Truvada
–
covered
by
patents
around
the
world
Problem
No
infrastructure
in
developing
world:
1,000-­‐paEent
penetraEon
(and
not
for
lack
of
trying)
Solu8on
15%
developing
country
license
to
Indian
manufacturers
/
discounts
to
wholesalers:
led
to
generic
penetraEon
of
2.9
million
1/3
of
HIV
pa8ents
treated
in
developing
world
take
a
Gilead
drug
www.gilbertslaw.ca

30. Thank
You
www.gilbertslaw.ca
416
703
1100