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Mining IP Value


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A Basic Primer for those interested in valuing IP- provides a survey of the legal tools and a summary of when they can be applied

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Mining IP Value

  1. 1. Mining Intellectual Property: The Key to Maximizing Core Value in knowledge based industries Andrea Rush, LLM. Patent and Trade-mark Agent Heenan Blaikie, Toronto
  2. 2. Preamble This presentation will consider the role of legal counsel in “IP Mining” - valuation of intellectual property, especially in the knowledge based sectors. Careful scrutiny may determine that a company owns or licenses one or more forms of intellectual property rights. They are: patents, industrial designs, trade marks and copyright. Context is everything- whether determining who owns the property, what it is, where the risks are, or the value. For example, certain subject matter- business methods – may not be readily patentable in Canada although protectable in other countries in which a corporation carries on business. Owners define commercialization potential. Individuals, their employers, independent consultants, joint venture partners, and others may collaborate to commercialize the intellectual property. The roles of legal counsel are primarily identification, protection and enforcement so that value can then be quantified by other professionals.
  4. 4. What is Intellectual Property? Content of the human intellect deemed to be unique and original and to have marketplace value—and thus to warrant protection under the law. Intellectual property includes but is not limited to ideas; inventions; literary works; chemical, business, or computer processes; and company or product names and logos. ... [Microsoft Computer Dictionary, 5th Edition] Patents, Trade-marks, Copyright, Industrial Designs
  5. 5. Types of IP Recognized Under Canadian Law Intellectual property refers to creations of the mind: inventions, literary and artistic works and symbols, names, images and designs used in commerce. These rights are “property” in the sense that they are based on the legal right to exclude others from using the property and in that ownership of the rights can be transferred. The rights are “intellectual” in the sense that they protect intangible subjects, usually arising out of some form of human creativity.
  7. 7. What is a Patent? Provides the owner (patentee) with exclusive right (monopoly) to prevent others from making, using and selling an “invention” for a fixed period of time Negative right only – may be subject to other rights Monopoly limited to jurisdiction covered by the grant (a U.S. patent is not enforceable in Canada) Term of monopoly is 20 years from the filing date granted in Canada on first person to file basis For: a product or process that provides a new way of doing something or offers a new technical solution to a problem, typically resulting in a vendible product Functional aspects eg construction of a corkscrew
  8. 8. What Can I Patent? Protection available for almost any new, useful and “unobvious” method or apparatus absolute novelty in Canada, subject to one year grace period for inventor-derived public disclosures obviousness imposes requirement of “inventive” effort Patent protection not available in Canada for computer programs (per se), business methods, methods of medical treatment and higher life forms other jurisdictions may be more progressive
  9. 9. What is an “invention”: Section 2 Patent Act “invention” means any new and useful* art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. -criteria: novelty, utility, statutory subject matter, non- obviousness/inventive ingenuity. -economic result must be produced:
  10. 10. Patentable Subject Matter -the invention may be embodied in equipment or apparatus -medical diagnostic methods -protein, vaccine and lower life forms such as bacteria and virus -method of ameliorating the adverse effects of age -apparatus for medical treatment
  11. 11. Non-patentable subject matter -natural phenomena, laws of nature, scientific principles; -computer programs if the discovery involved is a mere method of calculation; -method of medical treatment; -professional skills and methods; -printed matter producing only an artistic, intellectual or literary result; -human conduct or mental steps -higher life forms
  12. 12. Who Owns a Patent? Typically, employer is the owner of the patent inventor may be owner if invention not created in the course of employment independent contractor may be owner if employer did not contribute inventive effort written contract recommended to avoid later disputes Rights can be assigned or licensed in whole or in part
  13. 13. How Do I Get a Patent? process initiated by filing application with Canadian Intellectual Property Office (administrative agency) must describe invention in sufficient detail to allow a person of ordinary skill to implement it must describe a preferred mechanism for practicing the invention must define the monopoly rights desired (patent claims) final form of patent claims is negotiated between the patentee and a Patent Office Examiner legal document
  14. 14. What do I file with CIPO? Rule 94(1) of the Patent Rules: (a) a petition (b) an abstract (c) a sequence listing (Par. 111(a) of the Patent Rules (d) a copy of a sequence listing in computer readable form (Par. 111(b) of the Patent Rules (e) a claim or claims (f) any drawing referred to in the description (g) appointment of agent/ associate agent/rep.
  15. 15. The patent application: A) Abstract B) Description (text and drawings) C) Claims
  16. 16. Abstract : Summary in 150 words Sample: A heart valve with an annular valve body defining an orifice and having a plurality of struts forming a pair of cages on opposite sides of the orifice. A spherical closure members is captively held within the cages and moved by blood flow between open and closed positions in check valve fashion. A slight leak or backflow is provided in the closed position by making the orifice slightly larger than the closure member. Blood flow is maximized in the open position of the valve by providing a convex profile in the orifice-defining surfaces of the body. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within the heart.
  17. 17. Description (a) title of the invention (b) the technical field (c) the background art that is known (d) a description of the invention in sufficient detail to explain the technical problem and its solution (e) a description of the figures in the drawings (f) at least one mode for carrying out the invention (g) a sequence listing
  18. 18. Ownership and Registration Inventor as first owner Exception: employer as owner if invention made in the normal course of employment A transfer can be made at any time beginning at the date of invention, and until the patent expires (term) Rights may be assigned in whole or in part, dividing the rights by content, territory and time There may be multiple owners of co-existing rights in a patent/ copyright, but generally not in a trade-mark.
  19. 19. What is it an Industrial Design ? provides the owner with exclusive right (monopoly) to prevent others from making, using, advertising and selling an article embodying the owner’s design, or a design confusingly similar with the owner’s design gives owner the exclusive right to use and to exclude others from using monopoly limited to jurisdiction covered by the grant (a U.S. design registration is not enforceable in Canada) term of monopoly in Canada is 10 years from the date of registration granted in Canada on first person to file basis
  20. 20. What Can I Register as an Industrial Design? Industrial Design protection is available for almost any new and original shape applied to an article protection does not extend to functional aspects of an article application for registration in Canada must be filed within one year from first date of public disclosure of the design
  21. 21. Who Owns an Industrial Design? Typically, employer is the owner of the design author of design may be owner if “good and valuable” not consideration paid written contract recommended to avoid later disputes Rights can be assigned or licensed in whole or in part
  22. 22. How Do I Get an Industrial Design? Process initiated by filing application with Canadian Intellectual Property Office Must provide complete visual representation of finished article Effectively no negotiation in Canada Typically 1 to 2 years to obtain registration in Canada
  24. 24. What is a Trade-mark? Words, designs, sounds(?), smell (X) Used – goods/ services Purpose- to distinguish
  25. 25. Trade-marks: What Doesn’t Work? Confusing Descriptive Name/ surname Adopted by a Public Authority
  26. 26. Trade-marks: User as Owner Use by Applicant Use by Predecessor of applicant Use by Licensee Registration without Use
  27. 27. Trade-marks: The Registration Process Optional Identify Applicant Describe wares and services Identify first use date File/ Advertise/ Register/ Renew: 15
  28. 28. What is Copyright? Literary (books, software, databases?) Dramatic (plays, ballet, film) Artistic (aesthetic/ functional) Music (with or without melody)
  29. 29. Copyright: What Doesn’t Qualify? Ideas (vs. expression) Database compilations Features Dictated by Function
  30. 30. Copyright: Creator as Owner Author (s) Employer Joint Collective
  31. 31. Copyright: The Registration Process OPTIONAL Identify author/ assignee Identify the work by title Attach the work to assignment Advantages: presumptions (impact on transfer and damage awards)
  32. 32. Q&A