The Basics of Intellectual Property Management


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

Published in: Technology, Business

The Basics of Intellectual Property Management

  1. 1. 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 © 2008, Mongeon Consulting Inc. Page 1
  2. 2. 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) 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 © 2008, Mongeon Consulting Inc. Page 2
  3. 3. 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 © 2008, Mongeon Consulting Inc. Page 3
  4. 4. 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 © 2008, Mongeon Consulting Inc. Page 4
  5. 5. 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 © 2008, Mongeon Consulting Inc. Page 5
  6. 6. 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 © 2008, Mongeon Consulting Inc. Page 6
  7. 7. Career Opportunity Questions? In the patent field As patent agent trainees As patent examiners 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 © 2008, Mongeon Consulting Inc. Page 7