Presentation by Marcel D. Mongeon, Intellectual Property Coach as part of the Post Doctoral Fellowship Networking Event.

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Mongeon Seminars
The Information you need – When you need it! Outline
Intellectual Property described and defined
The Basics of Intellectual The ‘rules’:
Property Management Patents
Copyrights
Trade-marks
Marcel D. Mongeon Trade Secrets
Others
Intellectual Property Coach
The Value of Intellectual The Value of Intellectual
Property Property
RIM and NTP RIM and NTP - Effect of settlement – when was
What’s RIM? the decision?
What’s NTP?
NTP is said to be a ‘patent troll’
Acquires patents solely to threaten suit and
then licence
Is this a legitimate use of intellectual
property (IP)?
What’s in a Name? Intellectual Property
What is the value of a brand? What is intellectual property?
Answer found in: Best Global Brands Report
Intangibles such as traditional legal
Coca Cola?
Almost $67 Billion!
regimes such as patents, copyrights etc.
IBM $59 B Also includes knowledge of employees
Microsoft $59 B
How does value get created?
The NIKE® story
Bought design for $35 from Carolyn Davidson
Now #29 (up 10% from 31) at > $12 Billion
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What can an organization do
What are Employees worth?
with Intellectual Property?
What can you prevent an employee from Growing field as more interest in the
doing? knowledge based economy
Can they absolutely be prevented from We use intellectual property in a very
working for a competitor? broad sense (i.e. know-how and other
types are included even if not a ‘legal’ IP
Wal-Mart vs. Amazon regime)
amazon.com hired a number of IT execs McKinsey model:
Real ‘smoking gun’ was discovery of Use the best
documents that were taken Divest the rest
Application of Model to non-
McKinsey Model
profit Organizations
Universities, Government labs and
Hospital Research
Does the model work for them?
How can they ‘use’ IP?
How can they ‘divest’ IP?
The field of ‘technology transfer’
AUTM
The Definition of
How does TT take Place?
Technology Transfer
What is it? Licensing patents
Broadly stated: Creating spin-off companies
Anything that gets research results developed Engaging in industrially-sponsored
within academe into use outside of it research
We do this in many obvious – and some Sometimes no agreements
not so obvious – ways Research consortia
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Less obvious ways of TT IP Regimes
Training students (particularly in industrial Patents
settings) Copyright
Formal dissemination of results at Trade-marks
conferences Trade secrets
Informal discussions with industry Others
Letting industry use research equipment Plant Breeders Rights
and facilities Industrial Designs
Patents Patents – Subject Matter
History: Definition of Invention in Patent Act
Statute of Monopolies (Canada):
The ‘deal’: any new and useful art, process, machine,
manufacture or composition of matter
Inventor must make a full disclosure
In return they receive a monopoly for a fixed Specific exclusions from court decisions:
period of time Medical methods of treatment
Designed to encourage scientific higher forms of life (Oncomouse)
advancement Scientific principles
Other rules in other countries
Patents – Formalities Patents – Requirements
Patents require an application in each Subject matter
country Novelty
Application in very specialized language Non-Obviousness
Examination of application Utility
Term is 20 years from application
Many countries require maintenance fees
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Patents – Costs Patents – Ownership
Filing Fees are about US$500 per country Inventors start with the patent rights
Big costs are agent’s fees and translations Who is an inventor?
Total worldwide lifetime cost can easily be Policies may change this rule
US$500,000! University challenge:
Have you identified all of the inventors? (Grad.
Students?)
Will they take action if you forgot them?
Who is an Inventor? Conclusion on patents
Contrast with ‘Authorship’ Patents cover new and non-obvious
No definition in Patent Act of ‘Inventor’ inventions
Dependent on Facts Invention is embodiment of an idea
US and Canadian case law is different Application in each country protection is
In Canada: AZT: Conception with ‘sound sought
prediction’ of success Expensive
Contrast brainpower and horsepower
Copyrights Copyright – Subject Matter
History Work of original expression
The ‘deal’ Copyright has traditionally been able to
Protects an Original Expression keep up with media changes
The author should direct the use Current Challenges are the internet and
multi-media
In academe developing areas are:
Alternative delivery methods of teaching
Software and Open Source
Databases
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Copyright – Formalities Copyright – Ownership
National laws protect Owned by author unless written agreement
International conventions give some to contrary
automatic protection – no need for © or a The challenges with students, temporary
notice staff and workers
No need to register but it gives certain Copyright in traditional academic materials
presumptions
Term based on life of author plus years
Conclusion on Copyrights Trade-marks
Protects Expression of Idea The ‘deal’:
Prior publication does not affect legal Protects name that goods and services are
position sold with
Practical issue of discovering infringements
Trade-marks – University
Trade secrets
Situation
Usually a bookstore responsibility The ‘deal’:
Use of name now being sought in TT Don’t tell; contract with others not to tell
context
When will you allow use of your name by
industry?
Prospectuses
Advisory Boards
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Trade secrets and
Trade secrets – Formalities
Academics
Contracts: Conflict between our traditional mission of
Non-disclosure agreements free dissemination of information and
Confidentiality agreements industrial needs
Subject matter: Can we live up to our obligations?
Just about anything Should research institution sign a non-
Examples disclosure agreement?
Coca-Cola recipe What extra steps are you ready to take to
New computer algorithms safeguard information?
Protected IP – What is it
Other Regimes
worth?
Plant Breeders Rights Patents, TMs, Copyrights etc. cost money
Rights relating to traditional breeding to register and police
techniques Just because you have a patent does not
Industrial Designs mean the world will beat a path to your
Ornamentation without functional purpose door!
Valuation depends on markets
How to Value Early Stage
Reality of Intellectual Property
Finding?
100.00
What is first step in deciding what your 90.00
early stage finding is worth? 80.00
70.00
Is it value of research expenses? 60.00
50.00
Who is your customer? 40.00
What has to be done to get it to market?
30.00
20.00
Rules of thumb: 10.00
0.00
Rule of quarters -10.00
The 50/50 rule McMaster University FY97 to FY06, Net
Revenues/Disclosure over Disclosures, Max revenue=100
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Career Opportunity Questions?
In the patent field
As patent agent trainees
As patent examiners
www.cipo.ic.gc.ca
Looking for:
Biotechnology; Electrical; Organic Chemistry; general
Chem; Mechanical
Technology Transfer field Marcel D. Mongeon
Industry with an IP background +1 (905) 481 0133
Business Development marcel@mongeonconsulting.com
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