MaRS Best Practices: IP Best Practices for ICE Companies - Henry Ohab

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MaRS Best Practices_ Intellectual Property
Henry OhabThursday, February 24, 2011

What Is Intellectual Property ?
•  Patent
•  Trademark
•  Copyright
•  Industrial Designs
•  Trade Secret

Intellectual Property Protection
Patent
Protects new & useful concepts; strong protection rights
Trademark
Protects the source & reputation of the goods
Industrial Design
Protects ornamental features of products
Copyright
Protects artistic work including drawings, compilations,
manuals, etc.
Trade Secrets
Protected to the extent kept confidential. No recourse
against independent development.

Patents
•  Provides the right to exclude others from making,
using, and selling a product or process during the
term of the patent
•  Awarded in exchange for a fully enabling disclosure
of the “best mode” of practicing the invention
•  Term of the issued patent is 20 years from date of
filing
•  Patent rights are territorial

Why Patent?
•  Competitive advantage to prevent copying
•  Blocking patents as barrier to market entry
•  Royalty stream
•  Attract investment
•  Deter lawsuits from competitors
•  Negotiating for possible cross-Licensing
•  Increase value of the company for acquisition

Deciding What to Patent
•  As a business asset, value depends on other factors
beyond just technical merit
•  Is the invention so novel that broad claims are likely to
issue?
•  Blocking - effectively preclude others from copying?
•  Difficult for competitors to “design around”?
•  Can infringement be easily detected?

Where to File ?
Value is increased if protection is obtained in multiple jurisdictions
•  Where is the market for the product?
•  20 year term
•  Growing Economies
•  Where is the product manufactured?
•  Prevent manufacture of product in strategic locations
•  Import/Export Regulations
•  Where are my competitors? Where is the R&D market?
•  Which jurisdictions are strong in enforcing patent rights?
•  Importation
•  Policing
•  Litigation/Damages

What is Involved?
•  Inventor interview
•  Drafting the patent application
•  Prosecution of the application

Inventor Interview
•  Public disclosure or other possible bars apply ?
•  Determine inventorship
•  Understand the invention

Be Aware of Potential “Bars” to Patenting
•  Public disclosure, public use or offer for sale may be
a bar to obtaining a patent
•  1 -year grace period in US; Europe and most other
jurisdictions require absolute novelty
•  Any of “bar” actions start the clock ticking
•  Use Non-Disclosure Agreements with appropriate
description
•  Using NDAs also avoids the potential for the other
party filing for a patent on the same or similar ideas
•  File the patent application early

Determine Inventorship
•  Who contributed to the subject matter of the claims ?
•  What is their relationship with the company, e.g.
employee, contractor
•  When was the invention created?
•  Joint inventors – anyone who contributed to at least
one claim
•  Naming the correct inventors is important – a patent
that fails to identify the true inventors may be held
invalid and unenforceable

Ownership
•  Increased value when IP is owned by a single entity
  Employment Agreements in place before IP is generated
  Assignment Agreements before research is done by third party
  Joint Collaborations – IP considerations
•  All ownership of IP should be determined before the research is
conducted and before patents are filed.

Prior Art Searching?
•  No duty to search for prior art
•  But must disclose relevant prior art of which you’re
aware
•  Searching patent publications prior art may have
implications related to willful infringement for patents
found, since considered “on notice”

Drafting the Patent Application
•  Understand the invention both technically and in its
commercial context
•  Prepare a sufficient and enabling disclosure; do not
characterize the prior art
•  Provide claims of varying scope; less vulnerable to
prior art cited during prosecution and even after
issuance, and thereby highly enforceable
•  The claims of the issued patent define the legally
enforceable scope of the patentee’s rights
•  Draft different types of claims (product, system,
method) as appropriate to the invention

Patent Applications
•  U.S. Provisional Application
Consider filing if a public disclosure/ sale is imminent
Should be as detailed as possible to support claims once converted
Avoid unless absolutely necessary
(Patent Cooperation Treaty) PCT Application
International Application holding a filing date and place in nearly
every country in the world
30 month deadline for selecting jurisdictions in which to obtain
protection
Patentability report by IEA.
•  European Application
Single examination for EU Member Countries
If granted, can select countries for validation

First Filing
•  Typically, Canadians file first in US
•  Can file a Provisional application for lower fees while
preserving early “priority date”; convert to Regular
application within next 12 months; delays
examination, however.
•  The Specification of the Provisional application as
filed must provide support for claims once converted
•  File early to take advantage of the presumption that
first to file is the first inventor

Prosecution
•  A well prepared specification and claims can make
prosecution “cleaner”
•  Be aware of File Wrapper Estoppel in US
•  Duty of candor in US applies during entire pendency
of application

Maneuverability - Pending Applications
Ability for owner to modify the scope of the claims to
increase the value of the patent.
•  Amendment to claims must be supported by the
specification as originally filed or must be reasonably
inferred from the specification as originally filed.
•  Allows for amending the claim scope of the pending
application.
•  Amending claims of allowed patent very much more
restricted.

Post-Filing Timeline
Originating application filed
12 Months – PCT Application/Regular Application
18 Months – Publication of First application
30 Months – National Phase Entry of PCT Application

Post-Filing Strategy
Timeline for selecting jurisdictions:
•  1 year from priority date – regular filed application
•  30 months from priority date – PCT application
Delay in time allows for:
•  Funding
•  Confirming Market Acceptance
•  Research/Test Results
•  Partnering/Selling

U.S. Considerations
•  Continuation practice
•  Obtain allowed claims to narrow scope and then file
continuation patent directed to broader claim scope. Allows
patentee to adjust the claims based on actions of
competitors.
•  Terminal Disclaimers/Double Patenting.
•  Continuation-in-Part Applications for improvements.

Trademarks
•  A word, a symbol, a design or any combination
thereof used to identify the origin of goods and the
customer’s expectation associated therewith
•  Standard for infringement: likelihood of confusion
•  Actual use can establish rights under common law,
but prior registrations may result in infringement of
the rights of others outside the limited geographical
scope
•  Have a search done before investing in a particular
name/design
•  15 years, renewable indefinitely

Copyright
•  Automatically vests with the author of the work
•  Protects expression not underlying functionality
•  Prevents copying, not independent creation
•  Long term life of author plus 50 years (70 in US)
•  Can be registered for a nominal fee
•  Registration allows damages for infringement
•  Infringement: any unauthorized copying, distribution,
performance or display of a work

Industrial Designs
•  Cover the shape, configuration and ornamentation of
an article
•  Not function
•  Typically useful for consumer products of high
volume that may be subject to foreign knock offs.
•  Relatively cheap, but provides limited protection, total
10 years available in Canada

Trade Secrets
•  Can be anything the company considers valuable
and has not made publicly known
•  customer list, product plans
•  formulas (Coke)
•  manufacturing process (3M post-it notes)
•  Must take reasonable measures to protect the
confidentiality
•  Once disclosed, protection is lost

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