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Fundamentals of IP Management December 2nd, 2015

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1.  Overview of Intellectual Property 2.  Patent 101 3.  Branding, Trademarks & Social

Media 4.  Managing Commercial Aspects of IP

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Types of Intellectual Property - Copyright - Trademark - Industrial Design - Trade Secret - Patent

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Copyright

•  Applies to all original literary, dramatic, musical and artistic works •  Includes performers' performances, sound recordings, communication signals •  Lifetime of protection - life of the author plus 50 years

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•  Potentially indefinite monopoly for use mark in association with specified wares or services – sound

– picture

– word/phrase

Trademark

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•  10 year monopoly for ornamentation, patterns and shape that appeal to the eye

•  shape or shape and ornamentation of a finished article – computer icons – computer screen – computer hardware

•  not applicable to article function

Industrial Design

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•  Protection for clearly defined information (“know how”) with controlled access, as long secret is maintained –  GoogleTM algorithms –  CokeTM formula –  CaramilkTM secret

•  Only effective if…. –  no one reveals the trade secret, and –  reverse engineering not possible

•  Protection considerations for US activities

Trade Secret

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•  20-year monopoly to restrict others from making, using, selling claimed invention - nonrenewable –  computer network architecture –  consumer products –  computer media –  GUI

•  Patentee must fully disclose the invention including components and their interoperation

Patents

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Patent 101

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Requirements for Patentability •  Technical problem/solution •  The subject matter of the patent must

be: –  new (novel – not in public domain) –  non-obvious (inventive) –  applicable to industry (useful) –  repeatable

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Application Components

BACKGROUND

Provides the contextual story and the problem to be solved

DESCRIPTION/DRAWINGS

Tells “someone” how to do it

CLAIMS

Maps out your technology fence

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Managing and Commercializing IP

Should we start/focus here?

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Group discussion!

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• Must take into account three factors 1.  Budget (pre-filing, at filing, post filing) 2.  Time (pendency of applications) 3.  Trade-off between Information & Scope

• Requires your patent agent understands your technology and market/business ramifications

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IP Portfolio Budget – Factors and Action Items

•  Decide what % of R&D budget should go towards patent issues •  Patent searching – consider competitive landscape searching •  Determine unique features and underlying rationale •  Make a decision on whether business method patents are of value •  Prioritize innovations having commercial value to core business operations and set

goals for portfolio extent and technology focus •  Evaluate risk of “slavish copy” potential •  What kinds of bidders do you want to attract? •  Decide what parts of technology are more appropriate for trade secrets •  Find a great patent agent •  After evaluation of factors – set up meeting to discuss patent strategy •  Define and implement competitive landscape searching parameters •  Grow patent portfolio at an affordable rate, consistent and sustainable growth is key •  Take into account drafting, filing, examination, issuance, maintenance fee costs

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•  unenforceable •  licensable •  claim scope is flexible •  2-4 yr pendency •  18 month secrecy

•  enforceable •  licensable •  claim scope is fixed •  Up to 20 year lifespan •  public

Application Patent

• Patent gives the holder the ability to restrict others from practicing what is yours, based on content, territory and time

• Never forget, the holder is transferable!

Certainty vs. Uncertainty – you need both!

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Grant Tisdall Tel: 416-862-4318 Email: grant.tisdall@gowlings.com

Thank you.