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Entrepreneurship 101 - Intellectual Property

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  • 1.Introduction to Intellectual Property NORCAT November 20th, 2013

2. Introduction Forms of intellectual property Using an example that people can relate to Useful resources IP strategy primer Questions 3. Forms of Intellectual Property Protection Patents Trade-marks Industrial Designs Copyrights Plant Breeders Rights Integrated Circuit Topographies Trade Secrets 4. What is a Patent? Exclusive Right Territorial Granted by government authority Limited exclusive privilege that the law allows a patentee in his own invention Ownership Natural right arises from production You cannot obtain a valid patent application on the invention of another Term Limited period of time, usually 20 years from filing 5. Nature of Patent Right Bargain with the state Inventor gives full disclosure of invention in exchange for limited period of exclusivity Upon expiration of patent, the invention can be exploited by anyone Before expiration others have access to information Patent excludes others from making, using or selling your invention Your patent may not allow you to practice the invention No guarantee of Freedom to Operate 6. Form of Patent Application A patent application has: An Abstract A Description, comprised of the following elements: Title for identification purposes Field of the Invention, which describes the area(s) to which the invention relates Background of the Invention, which describes the related prior art and the problem that is solved by the invention Summary of the Invention, which is comprised of one or more general statements of the invention and usually provides the precise language for the claim(s) 7. Form of Patent Application Contd Brief Description of the Drawings, where applicable, including specific embodiments, examples, detailed description of figures, and the like Claims, which distinctly claim the part, improvement or combination of the invention which the applicant regards to be patentable Claims are drafted as a single sentence Broadest claim is independent and doesnt refer to any other claims Drafted as inverted pyramid getting narrower in scope Drawings are included where the description lends itself to them A Sequence Listing is required where the invention relates to genes or fragments thereof Deposit of Biological Material may be required to satisfy the description requirements 8. Published PCT Application 9. Published US Patent Application 10. Published Canadian Patent Application 11. Patent Claims 12. Patentable Invention Requirements New Useful Patentable subject matter Unobvious The first three you often get a sense of in an initial interview Can further investigate new and unobvious through a patentability search 13. Patentability Search and Assessment Invaluable to avoid re-patenting the wheel To establish scope of invention Language of the patent art Reveal the patent landscape in a particular area Reveal activities of competitors Useful information to consider when choosing countries or regions where protection should be sought if at all 14. Filing a Patent Application Must be filed in a timely manner Before publication or disclosure to the public, or Within grace periods, or In keeping with International Treaty requirements But, To provide a proper priority basis, the subject matter of a later claim must be taught in the priority filing 15. Disclosure of Invention Before Filing US: one-year grace period Canada: one year grace period from Canadian filing date EP: public disclosure prior to priority filing precludes the grant of valid patent rights Confidential disclosures may not be damaging, but are relying on receiving party to maintain confidentiality Disclosures that take place after filing can cause problems where an inadequate priority patent application is filed and claims lose entitlement to the priority date 16. Patent Application Process in Context Patent application process fits within a larger cycle of events in a plan for commercializing technology 17. Whether/How to File There are many factors that may play a role Why? Because the costs associated with patent protection and enforcement are significant and patents are territorial 18. Whether/How to File(contd) Factors to consider when deciding whether to file include: Potential commercial life of invention Scope of likely patent protection Public or private exploitation of invention Simple or complex technology market lead time Ability to keep secret free flow of technical information Capability to police patent State of development of technology Competitive posture of innovator How does proposed patent fit in a portfolio or strategy Importance of invention Financing/Leasing? A patent may be necessary to attract $ Defensive Reasons Are other forms of IP protection more appropriate? In particular, trade secret, industrial design or copyright? 19. Patent Application Process Typical TimelinePARIS CONVENTION National Filings Priority ApplicationandNational Entries of PCT FilingPCT FilingDeadline to Request Examination in CanadaMonths 012183072 (5 Years from Filing)Publication 20. Enablement Ensures that public receives its quid pro quo for patent grant Description must enable person skilled in the art to practice the invention without undue experimentation Factors to consider: Quantity of experimentation necessary Amount of direction and guidance provided Presence of working examples Nature of invention State of prior art Relative skill of those in the art Predictability of art Breadth of claims 21. Example of interplay between different forms of intellectual property Vital Alert -Patents on base technology (underground communications, censor monitoring) -Patents covering different applications (safer detonation) -Trade-marks (CANARY) -Possible registered circuit topographies -Shape of unit, possible industrial design and/or trade-mark (distinguishing guise) -Copyright protects computer code, and marketing materials -Trade secrets used to protect certain aspects of technology, and source code 22. Useful Materials USPTO Website Manual of Patent Examining Procedure (MPEP) 23. Useful Materials (contd) U.S. File Wrappers, through Patent Application Information Retrieval (PAIR) The Image File Wrapper (IFW) system is an image technology system for storage and maintenance of records associated with patent applications Available online 24. Useful Materials (contd) European Patent Office (EPO.org) EP File wrappers available online 25. Useful Materials (contd) ESPACENET provides patent family information 26. Useful Materials (contd) WIPO.org File wrappers for international stage available Published international applications and search reports available PCT Applicants guide available online provides comprehensive explanation of process 27. Useful Materials (contd) CIPO File wrappers are not available online Our guide is the Manual of Patent Office Practice (MOPOP) 28. Why an IP strategy? Not every technology company requires patents, certainly But each tech company requires an IP strategy, which may include an explanation as to why patents may not be necessary, or a solid plan for future filings Investors especially tend to demand at least a high level IP strategy An IP strategy is especially important for managing disclosures (see more on this below) And without being able to manage disclosures raising money and collaborating with outside parties is difficult, if not impossible 29. More on IP strategy An IP strategy helps identify the patent targets that can create the most value Take a broad view as to what may be patentable, so that important targets are not missed An IP strategy identifies the full range of IP assets that can be used, including trade-marks, design patents (covering for example user interface elements), and copyright Generally speaking, the emphasis is first on patents, but as a tech company scales, the value and importance of trade-marks increases significantly Picking a strong brand with good domain name coverage is important usually a strong brand is a suggestive brand but not a clearly descriptive brand be careful that famous marks in the US receive broad protection even beyond their scope of use First use or sales establish entitlement to use a trade-mark, so performing trade-mark searches closer to launch is important 30. More on IP strategy An IP strategy may include trade secret elements, and may incorporate defensive publication (especially once foundational IP is in place), which involves strategic publication of information to block third parties from patenting (used very effectively by IBM for example) Tech companies often scale very quickly, so it is important to build a strong IP foundation that can be used to build out a broader IP portfolio, once the resources are available, and if there is a compelling business case IP strategy provides the insights necessary to minimize the risk of joint development IP strategy needs to be updated from time to time (business strategy and technical roadmap should both be reflected) 31. Development of an IP Strategy In many cases, we develop an IP strategy informally, by discussing the technology road map, market opportunities, IP risks, and IP targets Other times we conduct a more formal IP audit that involves Reviewing technologies Technology/IP evaluation processes used by tech company Agreements and processes affecting handling of proprietary information Relationships with outside parties Current IP portfolio IP activities of competitors, patent landscaping IP SWOT analysis Usually a formal IP strategy document that distils key IP priorities and process/agreement improvements for reducing risk and maximizing value 32. IP and value creation The right patents can boost your valuation One strong patent that maps to the key market differentiators of a company can be more valuable than a portfolio of feature patents Acquirers will not b