Live @ Seminar 2: Managing Your Intellectual Property
Live here in the back row for New Ventures Seminar #2. This time around, I have wireless and will be posting live updates.
Live video broadcast at: http://webserver.lidc.sfu.ca/broadcast/
Introductions by Angie Schick. Reminder that next week’s seminar will be at a different location: UBC Robson Square. Another reminder: competition registration is due April 23.
Roger A. C. Kuypersof of Fasken Martineau DuMoulin LLP starts off. “Sorry that you’ll have to listen to a couple lawyers first”.
Copyright protects the expression of ideas. Work “is a catch-all term for anything: books, photos, websites. What are the requirements for copyright? Originality: requires skill and diligence. Fixation: must be expressed in some material form. The author of a work is the first owner of copyright. Freelancers and independent contractors are considered the author of their creations. However, if you are an employee, the company is considered the author.
Moral rights give the author of a work right to be associated with the work. They can only belong to people, and cannot be assigned, only waived.
Copyright is automatic. You can register it, but in Canada, there is little benefit to doing so. In the US, the benefits are more significant.
Question: does copyright in Canada transfer to the US?
Answer: No. However, most other jurisdictions still recognize your automatic copyright on works you’ve authored.
Trademarks are important because goodwill is associated between product and brand. Picking a good trade mark is very important; Distinctiveness is key. It should not describe your wares or services, and cannot be similar to competitors trade marks. You cannot register trade marks than describe the character or quality of your product. Also, the more descriptive it is, the harder it will be enforce. Examples: using “tech” or “soft” in a software company. Save-on-Foods is an interesting example; it is very descriptive, but their overwhelming brand power makes it descriptive.
Prior to choosing a trademark, search the trade marks registry. Pick a number of potential marks before searching as . In Canada: Canadian Intellectual Property Office Trade-marks Registry. Searching on the Internet is not necessarily complete.
Main search tools: Knock out search, full availability search, investigations, legal opinions. Knock out search: searching registry databases. Quick and inexpensive, but may miss marks that are close, but not identical. Most searches will reveal some measure of risk. Trade mark registration is per-country (except for the EU). Takes 1.5 years and costs about $2500 if there are no problems. Prioritize countries by value of market and likelihood of sales.
Question: I worked for a store that was very demanding about proper use. How important is this?
Answer: It is important, varying uses of marks dilute the claim to the mark.
Next speaker: Doran J. Ingalls of Fasken Martineau talking about patents.
If you disclose an idea to the public, others can use it unless you obtain a patent. It gives you the right to prevent others from marking, using, or selling the claimed invention. Lasts for 20 years.
Secrecy: keep your idea secret. Public disclosure prior to filling can be held against you. Use NDAs. In Canada and the US, you have a one year grace period, one year from the time of public disclosure to apply for a patent.
Not everything is patentable. It must be novel, new. Patent searching upfront can save you significant costs. You can search yourself online. USPTO, EPO, JPO. It must not be obvious, this is a bit of a grey area.
The first step is preparing an application. Working with an agent is recommended. If you’re only able to file in one jurisdiction, make it the US. Filing in multiple jurisdictions gets expensive ($100k+). A PCT application is the closest thing to a “world patent”. It is treated as a pending application in many countries. The US has provisional applications, which only serves to claim the date.
Question: Do I have to have a working model of my invention?
Answer: No, just having it on paper is enough.
Patents are assets. They can be sold, the value varies. Sometimes helps early stage companies be taken seriously, investors may insist on them.
Monopoly strategy: never license the patent. Must be willing to litigate, which may risk your patent.
Defensive strategy: Hold large portfolios. Don’t litigate unless defending self.
Licensing strategy: “Toll collection”. Have to be willing to license at reasonable rates. “Trolls” are companies that do nothing else than hold and license patents.
Problems with getting a patent: Expensive. Single US patent will probably cost $25K. Litigation costs money. It makes the subject matter public, 18 months after filing. Limited duration of 20 years.
Question: Should you patent something with a 3-4 year lifespan?
Answer: Depends on your goals. The process can be sped up. May be of other value.
An undisclosed idea is a trade secretTake reasonable efforts to maintain secrets. NDAs, office security. Trade secrets never expire, no filing is necessary. But that doesn’t mean it’s protected. It could be reverse engineered, or leaked. Security can be expensive to maintain.
Third and last up: Angus Livingstone, UBC Industry Liaison Office.
Good IP management starts at home. Do you have a record keeping policy? Security policy? Consulting agreements? Third party agreements? Employee agreements? Keep a due diligence binder of all agreements and IP documents.
Open Source: it’s a license, not public domain. Three types of licenses. Receiprocal: derivatives are subject to the same license. Academic: non-viral license. Commercial: combination of the two.
Holds up a bottle of Coke. How many types of IP protect a bottle? Trade mark, trade secret, patent.
Before a project: review patent and scientific literature. Create a collaborative research agreement. Educate your team about IP. For high value IP: identify inventors, confirm ownership, identify third parties, and document heavily.
Question: If you file a provisional application, can you state “patent pending”?
Answer: Yes.
Question: What about China, India, and other countries?
Answer: IP enforcement in China is improving.
Question: What about electronic data records?
Answer: Good security policies still apply.
