1. Lawyers | Patent and Trade-mark Agents
MaRS Centre, 101 College Street, #120E
Toronto, ON M5G 1L7
June 17, 2011
lawTechcamp 2011
An Open and Non-Traditional Analysis of
Intellectual Property Law
Felix Tang, B.A.Sc. (Eng. Sci.), M.A.Sc., LL.B.
Lawyer & Engineer

2. Goals
● Practical IP information and strategies
● i.e. “Business Strategy Drives IP Strategy”
● Future issues to consider?
● i.e. Openness, Sharing, Our digital lives...

3. I. Business Goals
● Clearly understand your business goals
● Create value through innovation.
● How do you protect that value?
● Phase 1: IP Administration
● Creation of IP assets
● Phase 2: IP Management
● Creating economic benefits from IP

4. What is IP?
● IP protects the intangible assets of your
business
● Brand, inventions, software, know-how
● IP used to accomplish strategic goals
● Competitive advantage
● Tick IP box to get funding
● Jurisdiction – each country is separate
● How to select type of IP protection?

5. When?
● Now.
● Planning IP strategy now, prevents legal
problems that cannot be fixed later.

6. Types of IP
● Confidential Information
● Copyright
● Trade-marks
● Patents
● Industrial Designs

7. Patents
● What is a patent?
● New == novel; not in prior art
● Inventive != obvious
● Subject matter
● First to file (except US)
● Why get a patent?
● 20 year right to exclude others
● Monopoly for public disclosure

8. Patent Strategy
● Risk: Be careful with disclosures
● Absolute novelty in EU and Asia
● By inventor, 1 year grace period in CA and US
● NDA is ok, but patent application is better.
● Risk: cost of enforcement!
● Approach patents in stages to manage cash flow
● Pro: flexible business tool, offensive and defensive

9. Ownership of IP
● Manage ownership of IP
● Agreements from founders, employees, contractors
assigning IP to company
● Don't assume that company owns any IP just
because you are paying someone!
● Be aware of third party rights
● Previous employers
● Universities, technology transfer organizations,
government agencies

10. II. Why IP?
● What is (was) the policy goal?
● Balance?
● Registration gives a presumption of rights!

11. What do WE want?
● Open SAFE creative life to express, invent,
play, make and hack...
● SAFE == not getting sued?
● Share == Contribute to the COMMONS
● Educate ourselves about IP!

12. Copyright
● Shrinking public domain... term is VERY LONG!
● Created and applies automatically to all “works”
● How to recreate the public domain?
● Use Copyright!

13. License
● License == Contract
● Contract == an agreement, a tool
● Contract to use copyright protected material
● Open Source && Creative Commons

14. Patents
● Goal: Prevent patent from issuing
● How: ANTICIPATION – attack novelty
● Practically: PUBLICLY DOCUMENT
EVERYTHING
● I don't want anyone to patent it.

15. Trade-marks
● “Genericide” == death by a thousand cuts
● Not really an issue, even trade dress, unless
out of balance or commercial USE
● Overzealous demands? Channels of trade is
limiting.

16. Open Source Hardware
● Interesting issues... copyright + industrial
design + trade dress + patents !!!
● Copyright applies to practically all the plans to
make the hardware. But not the hardware itself.
● What about patents? New or existing? Patent
pools...

17. Industrial Design
● I believe will become more important because
of 3D printing.
● “design” or “industrial design” means features of
shape, configuration, pattern or ornament and
any combination of those features that, in a
finished article, appeal to and are judged solely
by the eye;

18. Trolls / NPE
● Are you making a lot of $$$?
● If not, don't worry too much.
● Actually not true anymore... they like small “weak”
targets!

19. Demand Letter
● Is a threatening letter BUT...
● Be careful. Don't say anything, especially in
writing.
● “without prejudice”

20. What can I do?
● Always negotiate!
● Are you infringing? Why? Be honest with
yourself.
● Be prepared to have your bluff called, if you try
to call their bluff. Litigation == EXPENSIVE

21. General Strategy
● Marketing and advertising == tell a story that
the public understands and relates to
● Help create a “Streisand effect”
● Don't be intimidated! Don't be naive!

22. Smart Consumer of Legal Services
● Big Law == Big clients && Depth && Breadth ==
premium pricing
● Finder (Partner) and Grinder (Associate)
● Grinder is paid ~1 unit to bill ~3 units.
● Small firm == Specialized && Lean

23. What can I ask my Lawyer?
● Understanding of your business.
● Who is doing the work? Estimate? Range?
● Breakout bill: work done, hours, who.
● Challenge bill: Court Assessment Office

24. Entrepreneurship
● if (money < expenses) then {bankrupt}
● Professional services is always a trust
relationship
● Self-education, lowers costs

25. Lawyers | Patent and Trade-mark Agents
MaRS Centre, 101 College Street, #120E
Toronto, ON M5G 1L7
Thank you!
Remember: This is information, not legal advice.
Felix Tang, Lawyer & Engineer
felix.tang@innovatellp.com
@felixstang
1.888.433.2030