Felix Tang Innovate LLP lawTechCamp


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Felix Tang Innovate LLP lawTechCamp

  1. 1. Lawyers | Patent and Trade-mark Agents MaRS Centre, 101 College Street, #120E Toronto, ON M5G 1L7June 17, 2011lawTechcamp 2011An Open and Non-Traditional Analysis ofIntellectual Property LawFelix Tang, B.A.Sc. (Eng. Sci.), M.A.Sc., LL.B.Lawyer & Engineer
  2. 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. 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. 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. 5. When?● Now.● Planning IP strategy now, prevents legal problems that cannot be fixed later.
  6. 6. Types of IP● Confidential Information● Copyright● Trade-marks● Patents● Industrial Designs
  7. 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. 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. 9. Ownership of IP● Manage ownership of IP ● Agreements from founders, employees, contractors assigning IP to company ● Dont 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. 10. II. Why IP?● What is (was) the policy goal?● Balance?● Registration gives a presumption of rights!
  11. 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. 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. 13. License● License == Contract● Contract == an agreement, a tool● Contract to use copyright protected material● Open Source && Creative Commons
  14. 14. Patents● Goal: Prevent patent from issuing● How: ANTICIPATION – attack novelty● Practically: PUBLICLY DOCUMENT EVERYTHING ● I dont want anyone to patent it.
  15. 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. 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. 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. 18. Trolls / NPE● Are you making a lot of $$$?● If not, dont worry too much. ● Actually not true anymore... they like small “weak” targets!
  19. 19. Demand Letter● Is a threatening letter BUT...● Be careful. Dont say anything, especially in writing.● “without prejudice”
  20. 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. 21. General Strategy● Marketing and advertising == tell a story that the public understands and relates to● Help create a “Streisand effect”● Dont be intimidated! Dont be naive!
  22. 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. 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. 24. Entrepreneurship● if (money < expenses) then {bankrupt}● Professional services is always a trust relationship● Self-education, lowers costs
  25. 25. Lawyers | Patent and Trade-mark Agents MaRS Centre, 101 College Street, #120E Toronto, ON M5G 1L7Thank you!Remember: This is information, not legal advice.Felix Tang, Lawyer & Engineerfelix.tang@innovatellp.com@felixstang1.888.433.2030