This document provides an overview and summary of intellectual property concepts including patents, trademarks, copyright, industrial designs, and trade secrets. It also discusses strategies for patent filing, including whether to file, where to file, and the differences between US provisional and non-provisional patent applications. Key recommendations include establishing an IP strategy, prioritizing inventions based on business plans and budgets, and using the patent cooperation treaty or priority applications to keep filing options open.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
The Patent Law Primer By Attorney Brantley ShumakerDawn Yankeelov
This is a Techfest Louisville 2017 presentation by Attorney Brantley Shumaker entitled, "A Patent Law Primer." Techfest Louisville is Technology Association of Louisville Kentucky event held every other year.
This seminar was created and delivered by Michelle Holoubek, Don Featherstone, and Gaby Longsworth of Sterne Kessler on 07/30 for Impact.tech x Fifty Years.
NJTC: Protecting Patents & Data in the Commercial & Government Market Place McCarterenglish
McCarter & English hosts a seminar series for the New Jersey Tech Council on the legal and business ground rules every technology company needs to know to grow and protect its business: Government and International Contracting, Protecting Intellectual Property, Export Control and Immigration.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
The Patent Law Primer By Attorney Brantley ShumakerDawn Yankeelov
This is a Techfest Louisville 2017 presentation by Attorney Brantley Shumaker entitled, "A Patent Law Primer." Techfest Louisville is Technology Association of Louisville Kentucky event held every other year.
This seminar was created and delivered by Michelle Holoubek, Don Featherstone, and Gaby Longsworth of Sterne Kessler on 07/30 for Impact.tech x Fifty Years.
NJTC: Protecting Patents & Data in the Commercial & Government Market Place McCarterenglish
McCarter & English hosts a seminar series for the New Jersey Tech Council on the legal and business ground rules every technology company needs to know to grow and protect its business: Government and International Contracting, Protecting Intellectual Property, Export Control and Immigration.
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
ENT101 Season 3 - IP Management - Norton Rose FulbrightNORCAT
Intellectual property (IP) is the lifeblood of every knowledge-based startup or venture. In “IP Management”, 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 will depend on your ability to protect and properly exploit or commercialize your product or service innovations.
The presentation provides some background information about intellectual property as related to businesses and how the intellectual property can be used as a security interest or collateral for obtaining financing for businesses.
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
What Startups Should Do To Protect Their Big Mobile Application Idea? The Imp...Thomas O. Dubuisson
In today's knowledge economy, intellectual property rights (hereafter "IP") are very important and powerful.
Unfortunately for (young) entrepreneur's, it's not always the first thing that will cross your mind when you start a business. Indeed, you get excited by your project, you have a multitude of activities and issues that you have to deal with, you start to spread your idea everywhere, etc.
These lines (pages) will help you to be aware of the crucial importance of IP in your business (plan). You should strongly consider all these specific IP tools (patent, trademark, design protection, copyright, etc) before launching your mobile app.
How to Protect Your Innovations and Knowing the Right Questions to Ask | Just...UCICove
About UCI Applied Innovation:
UCI Applied Innovation is a dynamic, innovative central platform for the UCI campus, entrepreneurs, inventors, the business community and investors to collaborate and move UCI research from lab to market.
About the Cove @ UCI:
To accelerate collaboration by better connecting innovation partners in Orange County, UCI Applied Innovation created the Cove, a physical, state-of-the-art hub for entrepreneurs to gather and navigate the resources available both on and off campus. The Cove is headquarters for UCI Applied Innovation, as well as houses several ecosystem partners including incubators, accelerators, angel investors, venture capitalists, mentors and legal experts.
Follow us on social media:
Facebook: @UCICove
Twitter: @UCICove
Instagram: @UCICove
LinkedIn: @UCIAppliedInnovation
For more information:
cove@uci.edu
http://innovation.uci.edu/
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...OurCrowd
Join Zack Miller, Head of the Investor Community at OurCrowd, and Heidi Brun, leading patent attorney and Joint Head of the Patent Department at Eitan, Mehulal & Sadot, as they discuss the importance of understanding the fundamentals of intellectual property rights in order to make informed investment decisions.
Join us to learn about:
The various types of Intellectual Property (IP) and how they work
Why it is important for investors to read patents
Techniques for valuing intellectual property and how investors can do their own ownership research
Management, strategizing and budgeting of patent portfolios for companies at different stages of development
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
ENT101 Season 3 - IP Management - Norton Rose FulbrightNORCAT
Intellectual property (IP) is the lifeblood of every knowledge-based startup or venture. In “IP Management”, 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 will depend on your ability to protect and properly exploit or commercialize your product or service innovations.
The presentation provides some background information about intellectual property as related to businesses and how the intellectual property can be used as a security interest or collateral for obtaining financing for businesses.
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
What Startups Should Do To Protect Their Big Mobile Application Idea? The Imp...Thomas O. Dubuisson
In today's knowledge economy, intellectual property rights (hereafter "IP") are very important and powerful.
Unfortunately for (young) entrepreneur's, it's not always the first thing that will cross your mind when you start a business. Indeed, you get excited by your project, you have a multitude of activities and issues that you have to deal with, you start to spread your idea everywhere, etc.
These lines (pages) will help you to be aware of the crucial importance of IP in your business (plan). You should strongly consider all these specific IP tools (patent, trademark, design protection, copyright, etc) before launching your mobile app.
How to Protect Your Innovations and Knowing the Right Questions to Ask | Just...UCICove
About UCI Applied Innovation:
UCI Applied Innovation is a dynamic, innovative central platform for the UCI campus, entrepreneurs, inventors, the business community and investors to collaborate and move UCI research from lab to market.
About the Cove @ UCI:
To accelerate collaboration by better connecting innovation partners in Orange County, UCI Applied Innovation created the Cove, a physical, state-of-the-art hub for entrepreneurs to gather and navigate the resources available both on and off campus. The Cove is headquarters for UCI Applied Innovation, as well as houses several ecosystem partners including incubators, accelerators, angel investors, venture capitalists, mentors and legal experts.
Follow us on social media:
Facebook: @UCICove
Twitter: @UCICove
Instagram: @UCICove
LinkedIn: @UCIAppliedInnovation
For more information:
cove@uci.edu
http://innovation.uci.edu/
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...OurCrowd
Join Zack Miller, Head of the Investor Community at OurCrowd, and Heidi Brun, leading patent attorney and Joint Head of the Patent Department at Eitan, Mehulal & Sadot, as they discuss the importance of understanding the fundamentals of intellectual property rights in order to make informed investment decisions.
Join us to learn about:
The various types of Intellectual Property (IP) and how they work
Why it is important for investors to read patents
Techniques for valuing intellectual property and how investors can do their own ownership research
Management, strategizing and budgeting of patent portfolios for companies at different stages of development
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
The Inventor Boot Camp will help you focus on what’s important. We will show you ways to leverage your time and resources, eliminate unnecessary work, and direct your energies towards driving your product forward. And most importantly, we will teach you what it takes to become successful.
Key Strategies to Learn
How to perform an early stage benefit/market analysis to decide in advance who your end customer will be. Once you fully understand who your customer is, only then can you begin to piece together your business model.
How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
Rob McInnes, one of Australia's leading patent and technology licensing lawyers gives an overview of IP basics and recent developments aimed at startups.
This was presented in a recent workshop for the INCUBATE startups.
Legal mistakes can doom even the best startup concepts and founding teams. This workshop prepares you with a legal road map to successfully safeguarding your product or idea. Yuri Eliezer, Founder and Patent Attorney at SmartUp, will show you how to reserve your Intellectual Property rights.
This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
Take an engaging journey into the world of intellectual property (IP) and software. What IP do you have and how can you protect it? Is it better to use a trademark, copyright or a patent? How long does it take and what does it cost? This presentation will introduce you to the types of IP and why they matter.
With Catherine Vardy - Business Development Officer for the Atlantic Region, Canadian Intellectual Property Office (CIPO), and Philip Kerr -Partner at Kerr & Nadeau
As a startup team, you create something—whether it’s software, a domain name, business logistics or a reputation—that falls within a class protected by the law. Some classes are protected automatically. Others require going through a registration, application or examination process. Fenwick lawyers Stephen Gillespie and Christopher Joslyn discuss what intellectual property is, why it is important and hot-button issues startups commonly face.
Your SR&ED and Intellectual Property PrimerBoast Capital
IP ownership is an important topic that comes up frequently when companies claim SR&ED. During this webinar, Boast Capital asked PCK to share more info about getting into the patent system, IP protection and how it impacts companies.
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
A discussion of patent tips for startups, including:
- Carefully allocating precious startup funding
- Properly limiting disclosure of new products and concepts
- Understanding patent application timelines
- Knowing when a provisional application may be appropriate
IP: What Every Lawyer & Every Client Must Understand (Series: Intellectual Pr...Financial Poise
Intellectual property or “IP” is a term used to describe certain types of intangible property. Like other forms of property, such as real estate and personal property, IP can be owned, purchased or transferred. How ownership is determined differs according to the type of IP. This webinar discusses the importance of certainty in ownership of IP and how ownership of IP is entangled with areas of corporate law and employment law.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/ip-what-every-lawyer-every-client-must-understand-2021/
https://www.bardehle.com
https://www.bardehle.com/en/team/karl-christof
In an online event organized by German-American Business Council of Boston, Christof Karl of BARDEHLE PAGENBERG talked with his US colleagues Susan Glovsky and Alexander Adams of Hamilton Brook Smith Reynolds about IP issues which entrepreneurs and managers of technology-oriented companies should keep in mind. Do you have a plan for securing your innovations through patents? How can you avoid pitfalls that can forfeit your patent rights? In which situations would it be better to protect the innovations as secret know-how rather than to patent them?
In this presentation, FMC Partners Rob McDonald and Marlon Rajakaruna describe the importance of protecting your start-up company’s intellectual property (IP). The following topics are discussed:
- Types of Intellectual Property
- Patents
- Copyright
- Trade-marks
- Other Ways to Protect IP
- Protecting Your IP in Commercial Agreements
This presentation discusses how to select, protect and properly use a trademark so it can become a powerful brand for your products and services.
As well, it discusses "hot issues" in promotions and advertising law, including:
- recent Competition Bureau enforcement regarding misleading advertising;
- the use of social media in contests and promotions, including the need for transparency when engaging bloggers, endorsers and other "influencers" to promote your brand.
Le gestion de crise : considérations juridiques et pratiques pour traverser l...This account is closed
Au cours de ce programme de formation préparé spécifiquement pour les conseillers juridiques en entreprise, nous vous présenterons une série d’outils visant à vous équiper pour affronter la tempête, peu importe quand et comment elle se présente.
This presentation includes information about legal project management fundamentals, creating a framework for legal project management (define, plan, monitor and manage, review and improve), ethics and the law, conflicts from outside counsel and the general counsel.
Canadian Procurement/Construction Delivery Methods
Various procurement/construction delivery methods exist to provide alternatives as to how risks and responsibilities are allocated for a project and how key factors such as time and price are addressed.
Traditional Delivery Method:
Design-Bid-Build
- Stipulated Price
- Cost Plus
- Unit Price
Contemporary Delivery Methods:
- Construction Management (not-at-risk / at-risk)
- Design-Build
- P3’s
The Canadian government recently announced that the 12 Pacific Rim countries (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, Vietnam and the United States) negotiating the Trans-Pacific Partnership Treaty (TPP) reached an agreement. According to our government, the TPP will set a “strong regional standard” for the protection and enforcement of Intellectual Property (IP) rights, and will give investors and businesses confidence that the same IP rules will be applied across the TPP region. Before coming into force, the agreement must be ratified by each country.
In this presentation, Scott Foster discusses the IP provisions of the TPP, and examines potential changes to the IP regimes that may arise following an implementation of the TPP in Canada.
In this presentation, Gowlings partner Parul Armitage will look at current trends in life sciences licensing and collaborations.
Topics to be explored include:
Financial terms
Valuations
The continuing saga of the patent cliff
“More payer pressure, more commercialization risk”
Licensing as a commercialization strategy
Academic to industry licensing
The Cloud Computing Contract Playbook - Contracting for Cloud Services, Sept. 30This account is closed
Gowlings partner Paul Armitage discusses what is and isn’t unique about contracting for cloud services; key terms to look for and the differences between cloud and traditional IT services contacts; what to look for in a cloud services provider and its contract; storing data in the cloud; and tips and best practices for cloud services procurement.
It’s widely known that foreign companies looking to acquire strong targets are drawn to Canada’s vast resource sector. But there’s also plenty of M&A activity — and opportunity — across many other Canadian industries, such as technology, life sciences, media and communications, manufacturing and retail.
In this one-hour webinar, experts from Gowlings will share their insights on the Canadian M&A legal regime, and offer tips on how to navigate the complexities of the market and successfully acquire a Canadian company. Topics include:
- Building your acquisition model and determining the most appropriate structure for a Canadian company acquisition
- Determining the applicable tax rules and assessing the potential tax advantages
- An overview of competition law and the Investment Canada Act — due diligence, thresholds and the review process
PLSAs, SEPs and PAEs: The Antitrust/IP Acronyms You Should Know and UnderstandThis account is closed
In this presentation from June 2015, Davit Akman and a panel of other antitrust experts provide an overview of recent regulatory and jurisprudential developments in the U.S., Europe and Canada, and their impact on antitrust counselling and risk assessment.
Key topics discussed include:
• Patent litigation settlement agreements (PLSAs)
• Standard setting and conduct involving standard essential patents (SEPs)
• Conduct involving patent assertion entities (PAEs)
Your company’s people, products, profits and politics have a direct impact on its bottom line.
In this seminar presentation aimed at in-house counsel, HR and other business leaders, you’ll learn from legal and industry insiders on how to master these four key pillars ― and succeed in today’s competitive manufacturing market.
Intellectual Property: Legal Bootcamp, December 2013
1. Intellectual Property
Legal Bootcamp
December 2013
Presented by James Longwell, Partner
The information in this presentation is for general information
purposes only. It does not constitute a legal opinion or other
professional advice.
3. Basics: Intellectual Property
Intellectual Property (IP):
• Rights (limited monopoly) over creations of the mind
• Intangible property, not like a car, real estate or a dog
• Territorial: register rights
with each country
where protection is
desired
• Multiple types of IP
with different rules for
ownership, registration,
etc.
3
4. Basics: Intellectual Property
Types of IP Covered
in this Presentation:
• Patents
• Trade-marks
• Copyrights
• Industrial Designs
• Trade Secrets
4
5. Patents
What is a Patent?
A patent protects an invention:
• a new and useful product, composition,
apparatus, machine, process, or
• improvement thereto
5
6. Patents (Cont’d)
What is Patentable?
• Can’t patent math or science in the abstract – must have a
practical application
• Business methods – Federal Court says not prohibited if you can
fit into one of the groups – process, system, etc.
• Software – as a method/system/product in Canada and most
other jurisdictions
• Methods of medical treatment and “higher” life forms are NOT
patentable in Canada but may be in other jurisdictions
6
8. Patents (Cont’d)
Practical Tips:
• Keep invention confidential prior to filing a patent
application
• Publication may bar filing, or restrict filing options
• Publication includes any non-confidential disclosure
• Publication includes any disclosure that is available to
the public
• For the US, a sale or offer to sell, even if secret, triggers
one year clock to file patent application in the US
8
9. Patents (Cont’d)
Patent Protection:
• Once granted, the patent
owner obtains:
• the right to exclude others from
making, using or selling the
invention for a limited time in
country of grant
• Not a right to practice but to
exclude others
• May be subject to prior
patent rights
9
10. Trade-Marks
What is a Trade-Mark?
• Slogan: I AM. CANADIAN
• Symbol: [CBC]
• Word(s): CANADIAN TIRE
• Word & Design: [Cuisipro]
• Shape: [Coca-Cola bottle]
• Distinguishes the products/services of one business
from another to indicate the source and/or
character/quality
10
11. Copyright
What is Copyright?
• Protects the expression of an idea, not the idea itself
• It is the exclusive right to produce or reproduce an original work
• Literary – e.g. software
• Dramatic, Musical, Artistic
• Copyright is automatic once the
work is fixed
• e.g. saved or recorded to media
• Author is first owner
• Exception for works made by employees
11
12. Industrial Design
What is an Industrial Design?
• Visual features of shape, configuration, pattern or
ornament or any combination of those features applied to
a manufactured article made by hand, tool or machine
• Apple v Samsung – largest ever US patent award
APPLE IPHONE
DEVICE
APPLE US
COLOUR
GUI
MICROSOFT
ICON GUI
12
13. Industrial Design (Cont’d)
• Key steps to obtaining industrial design protection:
• no or recent (within 1 year) public disclosure of the design prior
to filing
• filing of the application
• examination – originality
• Some copyright works may also qualify as industrial
designs. Copyright may be lost if more than 50 articles
are made, therefore register as an industrial design
13
14. Trade Secrets
What is a Trade
Secret?
• Information which is
secret and has value to
the holder, for example:
• know how for technical or
business processes:
Cadbury Caramilk,
formulae for COKE or KFC
• an invention before it is
made public
• financial information (e.g.
cost/pricing)
14
15. Trade Secrets (Cont’d)
• Impose a duty of
confidence on receiving
party before sharing, for
example, through NDA
or implied agreement/
circumstances
15
16. Basics: Intellectual Property
Five IP Pitfalls:
• Patents – disclosing invention before filing as most
countries do NOT provide a grace period
• Trade-marks – using your mark improperly
• Copyrights – assuming protection extends to the idea
expressed
• Industrial Designs – assuming copyright applies when
more than 50 articles embodying work are made
• All IP – failing to deal with ownership of IP when hiring
contractors to do development work
16
18. Practical Approaches to Protecting Confidential Information
Practical Approaches:
•
Using phased disclosure of confidential information
•
Just saying no
•
Implementing “need to know” policies (internally and
externally)
•
Educating and setting clear expectations for
employees concerning confidential information
•
Use non-disclosure agreements (NDAs)
18
19. LEVEL 2 LEGAL BOOT CAMP
Common Challenges That An Early Stage Company Faces
As It Grows And Commercializes Its IP:
1.
Funding and Financing
2.
Licensing Basics
3.
Patent And Trade Secret Strategies
19
23. Strategy
•
What, when, and where to file must be part of an
overall IP strategy for your business and any
particular invention
•
Forms of IP:
- Copyright
- Patent
- Trade-mark
- Industrial Design
- Trade Secret
23
24. Strategy: To File or Not To File?
• Shield
• Sword
• Valuation
• Revenue
Cost of typical patent suit in US is $5M-$7M
24
25. Strategy: Where to File?
• What is your Business Plan?
• Short term:
- maximize valuation and opportunity
- establish US portfolio, keep other options open
• Long term:
- Market considerations:
• offensive and defensive
• Where are you making/using/selling/licensing?
• Where are your competitors doing the same?
• Prioritize inventions
25
26. Strategy: Where to File?
Options for protection in multiple countries:
• Priority Application
• First application filed for the invention
• Typically filed first in largest market (US)
• Convention Applications
• Second filed application to the same invention
• Filed within 12 months of the priority application
• File directly with country and/or with PCT Office
• Patent Cooperation Treaty (PCT)
• Holding mechanism to defer decision to file in specific
jurisdictions
• File International Phase with PCT Office and then National
Phase with specific Patent Offices
26
27. Strategy: Where to File?
• Example scenarios:
1Yr
0Yr
(12 mths)
invent ?
first
application
invent
(6 mths)
update
applications
country
publish
applications
1Yr
0Yr
?
(12 mths)
first
application
1.5Yr
(6 mths)
1.5Yr
2.5Yr
(12 mths)
update
applications
PCT
publish
application
country
applications
27
28. Strategy: US Provisional vs. US Formal
• What are the differences between US provisional and
US formal (non-provisional) applications?
28
29. Strategy: US Provisional vs. US Formal
Formal
Provisional
- complete application
(full description, drawings, claims)
- relaxed application content
(e.g. no claims, sketches permitted)
- formal papers signed by inv.
- few formal papers
- full government fees
- reduced government fees
- publication
- no publication
- examination
- no examination
- potential 20+ year term
- expires in one year
- may claim priority to earlier appln.
- cannot claim priority to earlier
- requires full disclosure
of invention
- requires full disclosure
of invention
29
30. Strategy: US Provisional vs. US Formal
•
Only claims supported by the provisional application are
entitled to the benefit of its priority date
•
European Patent Office practice generally requires exact
descriptive support in provisional application for claim
language in formal application
•
Self-disclosure of the new subject matter before the
formal application filing date may jeopardize the
available scope of the formal application particularly in
jurisdictions where there is no grace period
30
33. Strategy: Conclusion
•
Establish an IP strategy
•
There is value in uncertainty (e.g., a pending patent
application)
•
PCT keeps options open but at high cost
• Why file PCT if you have no intent to go worldwide?
•
Prioritize inventions:
• business plan
• patentability
• budget
33
34. Thank You
James Longwell
Partner
Toronto Office
416-862-4325
james.longwell@gowlings.com
montréal
ottawa
toronto
hamilton
waterloo region
calgary
vancouver
beijing
moscow
london
