Seminar #2: Managing Your Intellectual Property
Once again, it’s Victoria here, blogging from the room. I’m writing down key thoughts or ideas the speaker emphasizes, so if it’s not a full sentence, sorry!
First Up: Doran Ingalls on the Four Pillars of Intellectual Property
What types of IP can protect software?
Copyright or code
Patent
Trade-marks
Icons
1. Copyrights: protects the expression of idea, not the subject matter, sole right to produce work, needs to be original and fixation. Who owns copyright? The author, freelancers are considered authors, but employment is an exception to the rule (the assignment has to say it flows to you). Moral Rights can only belong to people, it arises automatically, registration of copyright enhances it, use copyright symbol. Management of Copyright? Focus on owner ship, how works are developed.
2. Trade-marks: they’re very valuable, consumer makes decisions based on trade-marks, protects the consumer, the goodwill associated with products reside in them, so pick a good one, register it and enforce it.
Picking a good TM: distinctiveness and descriptiveness are important: don’t pick words that describe wares or services, if you have a descriptive mark you can protect it like McDonald’s, but you have to do a lot of advertising, you can’t use a confusingly similar trademark to another.
How do you avoid these problems? Search your trademark.
Two types of rights: statutory rights and common law rights (Canadian Intellectual Property Office) How do you search? Knock-out search (CIPO, USPTO), full availability search, investigations and legal options. It takes about a year and a half to register and costs about $2500, trade mark can be expunged, so you need to use it, the owner of the trade-mark is responsible, trade-mark can also become the product (Kleenex, thermos) so differentiate product from brand. You need to keep on top of who is infringing on your trademark otherwise it becomes devalued!
Summary: Pick the right one, register it, use it or lost it, keep an eye out for infringements.
3. Patents: if you disclose you idea to the public you need a patent. What does it give you? It gives you the right to prevent others from making it, using it etc., lasts 20 years from filing date, in exchange you have to disclose it. What you don’t get with the patent? The right to make, use or sell the claimed invention, government enforcement of patent rights.
How do you get a patent?
Secrecy: Don’t talk about it. It can be taken and used against you, one-year grace, Patentability: not everything is patentable
Novelty: the invention must be new, (don’t go to the Canadian patent office) search USPTO, EPO, JPO, Google
Obviousness: grey area, since it’s wide open to interpretation
Subject Matter: it matters what it is, you can’t get patents for certain things
How do you apply for a patent?
Work with the patent agent and provide a detailed description. Where do you file? Patents are territorial, gets expensive, so take advantage of treaties: Paris Convention let’s you backdate and defer costs, PCT is a world patent and lets you do it for 2 ½ years. What’s a provisional application? Never becomes a patent, less expensive, useful for development stage, only claims priority. A PCT patent is about $18,000.
Patent Problems: cost, publication, limited duration (20 years), other alternatives
4. Trade Secrets: technology, recipes, know how, client customer information
How do you maintain a secret? Non-disclosure, contracts, mark documents as confidential, control access. Advantages? Never expires as long as it remains a secret, no filing or government approval (KFC and Coke). Disadvantages? Not everything can be protected, if secret exposed it is no longer a secret
Second Up: Dr. Mario Kasapi of UBC UILO expanding on this idea….
Take Home Messages:
1. Start good IP management practices NOW
2. Keep Good Records: easier to raise capital
3. Security Policy: date and sign policy, security policy
4. Consulting agreements (be careful because consultant owns everything they work on)
5. Third party agreements
6. Employee agreements (prior employment is important) IP assignment, waiver of moral rights
7. Put together a Due Diligence binder: this includes corporate document, HR, IP documents: freedom to operate opinions: What is this? He uses a “lid and pen analogy:” you invented a lid for a pen, but that doesn’t make the pen your patent, so you can manufacture the lid, but not the pen which includes the lid..so get third party contracts.
Types of Open Source Licenses: (is available but has to be licensed, free redistribution in modified or unmodified forms, etc.)
Reciprocal: GPL, LGPL
Academic
Commercial
Patenting Issues: keep good records, don’t talk about it in public, understand inventorship, first-to-invent vs. first-to-file ..then talks about trade-marks, proprietary materials are also IP, know-how is a huge one..so it’s not only patent and trade-marks
So: Don’t forget the SR&ED Documents, tax credits which makes it one of the advantages of being in Canada, then talks about UBC assessment overview and reports, takes about 5-7 weeks to complete. You can contact him at 604-822-8996 or email him at mario.kasapi@uilo.ubc.ca
Tags: copyright, doran ingalls, dr. mario kasapi, IP, managing intellectual property, new ventures seminar, NVBC, patent rights, trade-marks