Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. In this lecture, learn how to identify and manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage depends on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations.We use some real-world examples, particularly in the IT/Web 2.0 space, where IP issues arise and discuss how to address them effectively.

1. IP
Management:
Protecting
Your
Creative
Ingenuity
November
20,
2013
Nathaniel
Lipkus,
Matthew
Powell
&
Ashlee
Froese

2. www.gilbertslaw.ca

3. Overview
Sec$on
1
–
Overview
of
Intellectual
Property
Sec$on
2
–
Patents
Sec$on
3
–
Branding
Sec$on
4
–
Managing
Intellectual
Property

4. 1.
Overview
of
Intellectual
Property

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

6. The
Entrepreneur’s
Conundrum
vs.
Bootstrap
Invest
in
IP
www.gilbertslaw.ca

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

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

9. 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)
Patents
afford
choices
at
a
dif[icult
time
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10. 2.
Patents
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11. Patents
A
patent
is
used
to
defend
your
ability
to
be
unique
in
offering
a
feature,
service
or
other
advantage
resulting
from
invention.
Defend
by
forcing
competitor
to:
-­‐ Keep
advantage
out
of
their
offering;
-­‐ Provide
advantage
only
under
license;
or
-­‐ Develop
another
way
to
offer
advantage.
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12. 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.
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13. The
Right
Stuff
Patentable
Not
Patentable
Computer
process
for
sharpening
A
camera
image
(See:
copyright).
blurry
camera
images.
Process
for
generating
nested
menus
for
display
on
a
smart
phone.
A
stylized
Rolex
logo
icon
on
a
smart
phone
app
(See:
trade
mark
or
industrial
design)
A
wide-­‐angle
video
camera
lens
for
[ilming
panoramic
scenes.
A
Clint
Eastwood
movie
with
panoramic
scenes
(See:
copyright)
Starbucks
coffee
cup
lid
with
drip
Attractive
Starbucks
mug
(see:
reduction
features.
industrial
design)
Sound
processing
software
for
professional
music
studios.
Professionally
produced
love
song
(See:
copyright)
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14. Shhh
…
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15. 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
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16. Should
I
Just
Keep
It
Secret?
Patent v. Trade Secret
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17. Bootstrapping
Ideas
(Keeping Patenting Costs Under Control)
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18. 3.
Branding
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19. Trade-­‐marks
Ultimately,
the
trade-­‐mark
represents
the
reputation,
quality
and
expertise
of
a
company.
Nike
Inc.
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20. What
Could
Be
a
Trade-­‐mark?
Traditional
Trade-­‐marks
•
•
•
•
•
Single
word
Group
of
words
Group
of
numbers
Slogan
Design
(with
words)
SUBWAY
BURGER
KING
967-­‐1111
DUDE
YOU’RE
GETTING
A
DELL
• Design
(without
words)
Non-­‐Traditional
Trade-­‐marks
Three-­‐Dimensional
Colors
Distinguishing
Guise
Sound
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21. The
Sword
and
the
Shield
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22. The
Far
Reach
of
Non-­‐Traditional
Trade-­‐mark
Protection
Trade - mark:
Owner:
Registration No.:
Category:
Trade -mark:
Owner:
Application No.:
Category:
The Boeing Company
1,416,954
Category:
Store front entrance
Trade -mark:
Owner:
Company uniforms
Colour configuration on plane
Trade -mark:
Owner:
Application No.:
Category:
Build-A-Bear Retail Management, Inc.
United Parcel Service of America, Inc.
TMA528,999
Retail check out counter
Abercrombie & Fitch Trading Co.
1,530,377
Category:
Trade -mark:
Owner:
Sound Mark
(Roaring lion sound)
Metro-Goldwyn-Mayer Lion Corp.
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23. The
Good,
the
Bad
and
the
Forgettable
Suggestive
Coined
Generic
Descriptive
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24. 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

25. Registration
Process
Fact finding: client’s brand, use & searches
Priority filing deadline
Examiner’s Report: substantive v. formalities
Use?
Pleadings,
evidence,
argument, x-exam,
hearings
www.gilbertslaw.ca

26. 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

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

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

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

30. 4.
Managing
Intellectual
Property
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31. How
Not
to
Manage
IP
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32. 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

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

34. Apple/Samsung
What’s
really
going
on?
Apple
and
Samsung
are
trying
to
take
a
bigger
%
pro[it
of
each
other’s
products
www.gilbertslaw.ca

35. 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)
Solu$on
15%
developing
country
license
to
Indian
manufacturers
/
discounts
to
wholesalers:
led
to
generic
penetraEon
of
2.9
million
1/3
of
HIV
pa$ents
treated
in
developing
world
take
a
Gilead
drug
www.gilbertslaw.ca

36. Thank
You
Nathaniel
Lipkus
Matt
Powell
Ashlee
Froese
www.gilbertslaw.ca
416.703.1100