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IP Management:
Protecting Your Creative Ingenuity
November 20, 2013
Nathaniel Lipkus, Matthew Powell & Ashlee Froese
www.gilbertslaw.ca
Sec$on 1 – Overview of Intellectual Property Sec$on 2 – Patents Sec$on 3 – Branding Sec$on 4 – Managing Intellectual Property
Overview
1. Overview of Intellectual Property
What is Intellectual Property?
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The Entrepreneur’s Conundrum
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Bootstrap
vs.
Invest in IP
Types of IP Protection
Your Business
Patent
Trademark
Copyright Design
Trade Secret
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Canadian IP: By the Numbers
20 The percentage of Canadian science or technology businesses that have sought IP protection of any kind
1.14 The percentage of R&D expenditures by Canadian universities that are captured as revenues down the road (compare to 5% for the United States)
4.5 Billions of dollars in net licensing revenues that Canadian entities pay to foreign entities because Canadians are buyers not sellers of IP
17 Canada’s rank out of 24 developed nations on an OECD innovation scale (despite being 7th in R&D)
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IP = Value Capture
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$12.5 Billion ÷ 17,000 Patents $735K per Patent
$4.5 Billion ÷ 6,000 Patents $750K per Patent
Brand Value: $77.8 million (US)
Patents afford choices at a dif[icult time
2. Patents
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Patents A patent is used to defend your ability to be
unique in offering a feature, service or other advantage resulting from invention.
Defend by forcing competitor to: -‐ Keep advantage out of their offering; -‐ Provide advantage only under license; or -‐ Develop another way to offer advantage.
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Eureka?
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Invention means: -‐ New, useful, non-‐obvious machine, manufacture, composition of matter, art or process, or a new useful, non-‐obvious improvement in one of these things.
The Right Stuff
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Patentable Not Patentable Computer process for sharpening blurry camera images.
A camera image (See: copyright).
Process for generating nested menus for display on a smart phone.
A stylized Rolex logo icon on a smart phone app (See: trade mark or industrial design)
A wide-‐angle video camera lens for [ilming panoramic scenes.
A Clint Eastwood movie with panoramic scenes (See: copyright)
Starbucks coffee cup lid with drip reduction features.
Attractive Starbucks mug (see: industrial design)
Sound processing software for professional music studios.
Professionally produced love song (See: copyright)
Shhh …
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Patent Preparation and Filing
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1. Understand inventorship and ownership • Who has a right to be named an inventor? • Who has a right to own the patent?
2. Prepare patent application • Prepare description, drawings and claims.
3. File patent application • Paperwork + patent application + fees in each country. • Use fee-‐deferral techniques when patenting in more than one country.
4. Negotiate With Examiner(s) (“Prosecution”) • Will have to wait awhile to hear from Examiners (2-‐3 years sometimes). • Use progress with one Examiner to speed up examination elsewhere.
5. Receive Granted Patent
Should I Just Keep It Secret?
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Patent v. Trade Secret
Bootstrapping Ideas
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(Keeping Patenting Costs Under Control)
3. Branding
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Trade-‐marks
Ultimately, the trade-‐mark represents the reputation, quality and expertise of a
company.
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Nike Inc.
What Could Be a Trade-‐mark? Traditional Trade-‐marks
• Single word SUBWAY • Group of words BURGER KING • Group of numbers 967-‐1111 • Slogan DUDE YOU’RE GETTING A DELL • Design (with words)
• Design (without words)
Non-‐Traditional Trade-‐marks
Three-‐Dimensional Colors
Distinguishing Guise Sound
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The Sword and the Shield
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The Far Reach of Non-‐Traditional Trade-‐mark Protection
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Category: Company uniforms
Trade - mark: Owner: United Parcel Service of America, Inc. Registration No.: TMA528,999
Category: Colour configuration on plane
Trade - mark: Owner: The Boeing Company Application No.: 1,416,954
Category: Retail check out counter
Trade - m ark: Owner: Abercrombie & Fitch Trading Co. Application No.: 1,530,377
Category: Store front entrance
Trade - mark: Owner: Build - A - Bear Retail Management, Inc.
Category: Sound Mark
Trade - mark: (Roaring lion sound) Owner: Metro - Goldwyn - Mayer Lion Corp.
The Good, the Bad and the Forgettable
Descriptive
Suggestive Coined
Generic Descriptive
Suggestive Coined
Generic
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Obtain Trade-‐mark Registrations • Formalized protection of business asset • Increase value of your company • Registration certi[icate is evidence of ownership • Exclusive use • Rights are country-‐wide • Renewable registration periods • Access to Federal Court judgments • Springboard for international protection • Other avenues (domain name disputes, social media etc.)
How to Best Protect your Brand
Examiner’s Report: substantive v. formalities
Fact finding: client’s brand, use & searches
Priority filing deadline
Use?
Pleadings, evidence, argument, x-exam, hearings
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Registration Process
The Living Brand
• Use proper marking and ownership notices • Avoid genericization • Use trade-‐mark properly • Consistently use the trade-‐mark • Continue to use trade-‐mark properly • License properly • Police vigilantly • Audit the wares/services • Renew, renew, renew
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Ponder this…
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have in common?
POST-IT
ASPIRIN
KLEENEX
BAND-AID plasticine
zipper
escalator
What do:
Let’s Get Social
192 million domain names registered 126 million online blogs 27.3 million daily tweets 350 million people on Facebook 90 trillion emails sent in 2009
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Assumption Reality
Brand Inc.
BRAND.com twitter/BRAND Facebook/BRAND
.ca
.net .info
.mobi
.museum .jp .us
.co .me .uk
.eu .xxx
The Online Assumption
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4. Managing Intellectual Property
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How Not to Manage IP
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Good Housekeeping Know Your IP • Use invention disclosure forms to capture inventions rather than rely on notebooks.
• Use spreadsheets to track brands, inventions, patent applications, patents, trademarks, copyrights, trade secrets
Ensure IP Ownership • Ensure IP being created at the instruction of the company by employees, outside contractors etc. is owned by the company
• Establishing formal, written agreements early reduces costly disputes later • Maintain a repository of employment agreements, outside contracts, nondisclosure agreements, supply agreements
Conduct Periodic IP audits
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IP Hurdles vs. IP Barriers
Survey the IP Landscape
Avoid barriers Overcome hurdles
Protect your own IP along the way
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Who owns background IP?
What patents/designs could block you?
What businesses are branding like yours?
Any big players to plan for?
Act early!
Can you license? Cross-‐license? Partner? Co-‐exist?
Can you invalidate blocking IP?
Any ways to insure?
Apple/Samsung
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What’s really going on? Apple and Samsung are trying to take a bigger % pro[it of each other’s products
AIDS in Developing Countries
1/3 of HIV pa$ents treated in developing world take a Gilead drug
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IP Gilead had developed breakthrough ARVs: Viread, Truvada – covered by patents around the world
Problem No infrastructure in developing world: 1,000-‐paEent penetraEon (and not for lack of trying)
Solu$on 15% developing country license to Indian manufacturers / discounts to wholesalers: led to generic penetraEon of 2.9 million
Thank You
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416.703.1100
Nathaniel Lipkus Matt Powell Ashlee Froese
