This document summarizes an open discussion on intellectual property law hosted by Felix Tang. The discussion covered practical IP strategies for businesses, including understanding business goals, different types of IP like patents, copyrights, and trademarks, and how to manage ownership and protect value. It also discussed issues like openness, sharing, and demands from patent trolls, as well as general strategies for negotiating and educating oneself on IP issues.

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