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Transcript of Intellectual Property, Contract and Commercialization for Graduate Students and Postdoctoral...
Intellectual Property, Contract and Commercialization for Graduate
Students and Postdoctoral Fellows.
Presenters:D. Scott Lamb
Associate Counsel, Richards Buell Sutton
Sze-Mei YeungPartner, Richards Buell Sutton
Greg SasgesIn-House Legal Counsel, Office of Research Services, SFU
Ian HandManaging Director, SFU Innovation Office & Executive Director Venture Labs®
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Objectives
• Recognize the strategic value and benefits of intellectual property (IP)
• Understand the various forms of IP
• Learn how to protect and use your IP
• Discover a wealth of IP resources
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• IP is a valuable business asset
• IP information and protection may help you avoid costly mistakes
• IP gives you an edge over the competition
• IP can be sold, licensed or traded
IP: what’s in it for you?
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Benefits of IP information
• Identify trends
• First look at the competition
• Identify key contacts
• Find solutions to problems
• Avoid duplication of effort
• Prevent infringement
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• Trade secrets
• Patents
• Trade-marks
• Copyrights
• Industrial designs
Common forms of IP
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What is a“trade secret”?
Any confidential information used in a business that provides a competitive edge and can be kept secret
The confidential information can be:• specific product information
• business information
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Trade secret protection
• Trade secrets are protected by confidentiality and licence agreements
• Protection lasts forever, as long as confidentiality is maintained
• If the trade secret is disclosed, protection is lost
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The “deal” of the patent
The owner provides a full public disclosure of the invention
The Canadian government provides a grant of exclusive rights in Canada to the owner for 20 years from the date of filing
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What is patentable?
• Product
• Composition
• Machine
• Process
… or its improvement
The invention must be new, useful and non-obvious
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• Prior to filing an application:
– Keep your invention confidential
– Search patent databases and scientific literature
– Consult a registered patent agent
• Patent application:
– Draft and file
– Request examination
– Respond to CIPO’s objections, if any
Patenting process
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What is a trade-mark?
• Word(s) KODIAK
• Word and design
• Design
• Slogan “ZOOM-ZOOM”
Reproduction courtesy of Kodiak Group Inc.; Hasbro, Inc.; Schering-Plough Healthcare Products, Inc. All rights reserved; Mazda Motor Corporation.
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What is a trade-mark?(continued)
• Shape
• Sound
• Certification mark
Reproduction courtesy of (bottle & design) Coca-Cola Ltd.; Metro-Goldwyn-Mayer Studios Inc.; (Woolmark design) The Woolmark Company.
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Trade-mark protectionand registration
Registered Not registered
Geographic coverage Coverage is regional across Canada
Period is 15 years, Period of use is to renewable be proven
Present in the Not present in theTrade-mark Register Trade-mark Register
Registration serves as Ownership to be proof of ownership demonstrated and
defended
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Use it or lose it
• Control all use
(distributors/retailers/licensees)
• License use to others
• Avoid generic use
• Stop unlicensed use
• Maintain continuous use
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What is copyright?
It is the exclusive right to produce or reproduce a creation• Literary
• Dramatic
• Musical
• Artistic
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• Copyright is automatic upon creation and registration provides a legal advantage
– Only form of protection that is world-wide
• Use proper marking: © owner’s name, year
• Term is generally life of author plus 50 years
Copyright registrationand protection
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What is anindustrial design?
The visual features of shape, configuration, pattern or ornament, or any combination of those features applied to a manufactured article
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Industrial designregistration and protection
• Industrial designs must be registeredfor protection
– Keep confidential prior to filing
– Search, file with CIPO and await a response
• Design registration provides a maximumof ten years of protection in Canada
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Summary of IP forms
ProtectApplication
required Term
Trade secrets
Confidential information
N/A indefinite
Patents Inventions yesUp to 20
years from date of filing
Trade-marksWords,logos,
slogans, sounds
recommended15 years, renewable
CopyrightsWritings,
music, art, plays, etc.
recommendedlife + 50 years
(many exceptions)
Industrial designs
Visual features
yes up to 10 years
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Summary
• IP is a valuable business asset and appeals to consumers and investors
• Using IP system helps avoid costly mistakes
• IP information is an immense source of business and technology information
2121
Intellectual Property Ownership and Contractual Issues
for Graduate Students and Postdoctoral Fellows
September 11, 2014
Presented to Simon Fraser Universityby Sze-Mei Yeung
Outline
• Employees versus Contractors• Collaborative Research Agreements (“CRA”) • Joint Ownership of Intellectual Property (“IP”)• Confidentiality & Publication• Improvements
Employees versus Contractors
– IP created by employees generally owned by employer if created using employer’s resources and as part of employment duties
– Independent contractor owns IP – Contracts can amend or supercede these concepts – Need clear language addressing ownership of
inventions
Sample Language– You agree that all data, designs, inventions,
discoveries, improvements, software, copyright, know-how or other intellectual property, whether or not patentable or copyrightable, created by you at any time during your employment OR during the term of this Contract (the “Works”) are owned by ABC Co.
– Without limiting the foregoing, you hereby irrevocably waive all moral rights in the Works and assign and transfer to ABC Co. your entire right, title and interest in such Works.
Research Collaborations
• Persons (or organizations) with complementary technologies agree to collaborate in a research program to co-develop a single product
• Pools intellectual capital & financial resources to further research and development of less mature technology, under the terms of a CRA
• Issues to consider: clear project definition (responsibilities, timelines and budgets), ownership of IP, filing and prosecution of patents, rights to commercialise
Joint Ownership
• A joint owner cannot license or assign a partial interest in a jointly owned work without consent of other co-owner(s)
• Complicates licensing and commercialisation of inventions to third parties if there are multiple joint owners
• Alternatives to assigning rights include choosing not to participate in a project or excluding certain “background or pre-existing technology” from any assignment
Confidentiality & Publication
• Confidentiality provisions or agreements protect disclosure and/or unauthorised use of confidential information including trade secrets and undisclosed technology
• Usually needs to be balanced with rights of faculty/students to publish research results
Sample Language
• You will keep the Confidential Information in confidence and will use the Confidential Information solely for the purposes of performing the services set out in this Contract, and will not without ABC Co's prior written consent, disclose any Confidential Information to any person or entity
Publication
• Reserve rights to publish research results• Provide 30 to 60 days to review proposed publication
or disclosure • Include period of time after which publication must
proceed (e.g. 6 months) • Confidentiality provisions should allow disclosure to
faculty / students etc. who require confidential information
Improvements
• An addition or alteration which increases the quality or value of something
• “Improvements” used in licenses and CRA’s • Can be broadly or narrowly defined • Broad definition may provide automatic pipeline to
future developments
Sample Language• Broad Definition: “means improvements, variations, updates,
modifications, and enhancements made and/or acquired by either Licensor or Licensee relating to the Technology at any time after the Start Date.”
• Narrow Definition: “means a patent application or patent covering an improvement to the invention claimed in the Licensed Patent, provided that the improvement: (i) performs a function or functions substantially the same as those described in the claims of the Licensed Patent, (ii) is invented solely by the Principal Investigator while employed at SFU; and (iii) cannot be legally used or practiced without infringing a valid claim of the Licensed Patent.”
700 – 401 West Georgia StreetVancouver, BC Canada V6B 5A1
www.rbs.ca
Questions?
Sze-Mei Yeung, [email protected]
Please tell us how we did:
• An evaluation form can be found at:• http://websurvey.sfu.ca/survey/184113025