This week’s seminar is presented by Roger Kuypers and Susan Ben-Oliel of Fasken Martineau and Mario Kasapi of UBC and is called “Managing Your Intellectual Property.”

Intellectual property (IP). Roger opens up at 6:05pm by explaining the four pillars of intellectual property: copyrights, trademarks, trade secrets, and patents. What types of IP protect software? The answer is all four!

COPYRIGHT: Copyright protects the expression of an idea, but no the idea itself. Copyright is the sole right to produce or reproduce a work, or a substantial part of a work. Wait, but was is a “work”? It is things like books, songs, computer programs, instruction manuals, even website designs. What is required to get  a copyright on a work? First, it must be original (this does not necessarily mean creative). Second, it must be expressed to some extent in some material form, which is called “fixation.”

Generally, the author or creator of a work has first ownership of copyright. This includes freelancers creating work for others—so if you hire a contractor, make sure you forge a contract that grants you copyright. However, employees creating things for their employees don’t own copyright typically, the employer does.

Moral rights are a components of copyrights. They can only belong to people, and cannot be assigned (but can be waived). Moral rights give the author an exclusive right to be associated with the work and the integrity of the work. Fortunately, this potential concern can be eradicated with a single line of text in any given contract—just ask them to waive their moral rights.

Next, Roger discusses copyright protection. It arises automatically, he says. Use the copyright symbol and register for copyright when dealing with anything semi-important. It isn’t as big a deal as in the U.S., but it is a simple and inexpensive process. But then how do you manage your copyrights once you own them? Focus on ownership and rights. Ask yourself about your company, how are copyright works developed? And what do your contracts say about copyright? Look at employment agreements, service contracts, licenses, etc.

TRADEMARKS:  At 6:30pm, Roger explains that the “goodwill associated with products and companies reside in their respective trademarks.” This is hugely important. In fact, Roger argues trademarks are even more important than trademarks—consumers make decisions based on trademarks.

Managing trademarks: First, pick a good trademark. What makes a good one? Distinctness, AKA the ability to distinguish your wares from others. Search other trademarks to make sure none are similar to yours. Your trademark does not describe your wares and services—your brand builds that meaning and association overtime. (Consider Kodak or Apple, names entirely unassociated with their wares and yet brands have been been built around them.)

Search for statutory rights and common law rights when searching and clearing your trademark. Search the Canadian Intellectual Property Office Trademarks Registry. You can also do Knockout Searches, which are searches of registry databases such as CIPO, USPTO, etc. The pros of this method are high speed and low cost.

Roger advises the audience to apply the TM symbol in as many contexts as possible—it’s not do or die, but it can make things easier if you ever engage in legal battle. Which leads Roger to one of his final points: make sure you enforce your trademarks thoroughly. One pitfall of trademarks is that if your trademark ends up describing the product (think Thermos or Kleenex), you may lose your rights. Then again, that level of ubiquity means it’s a problem you probably wouldn’t mind having.

As 6:50 rolls around, Rogers runs out of time and is forced to rush through his remaining slides. However, these slides, plus a video of the seminar, will be online in a few days for those interested.

Next up is Susan Ben-Oliel, also of Fasken Martineau.

She opens up by saying that multiple forms of IP can be used to protect a single product. In fact, all four pillars of IP can apply can be associated with one product, but a fully integrated protection plan is both costly and time consuming.

PATENTS: A patent is essentially a contract with the government—in exchange for disclosing your invention publicly, you are granted a term of monopoly. If your company has an idea, keep it absolutely secret until it is patented or it will be stolen. Why choose a patent? Gives you a monopolistic right to prevent others from making, using, or selling the invention. It lasts u to two decades. The downside? You must disclose your invention, and you will eventually lose it to public domain.

But wait! Even if you get a patent claim granted, that doesn’t necessarily mean you are able to operate the invention. The freedom to operate is not the same as having a patent go through. And you are solely responsible for policing your own patent.

At 7:00pm, Susan goes over how to obtain a patent: maintain full secrecy before filing your patent. (In Canada and the U.S., you have a one-year grace period during which you can disclose your invention before filing the patent but it doesn’t apply outside of North America, so be wary.) The U.S. is actually often the best country to file your patent in because the filing time doesn’t eat up the monopoly term, whereas in Canada it does.

Also note, Susan says, that not everything is patentable—it must be new (a novelty), non-obvious (not a tweak of past inventions), and a utility (it does as described). No one else in the entire world can have made available your invention to the public before you file for your patent. The inventive ingenuity of your patent must be a development or improvement that isn’t obvious to workers of average skill in the technology involved. Traditional patents into electronics, chemicals, pharmaceuticals; less traditional patents include games, software, and business methods.

At 7:15pm, Susan says you may be surprised at what is patentable. But patents can be expensive, and are territorial—so you have file a separate patent in each country where your product or service or invention will be utilized in any manner. First-time applicants may want to file for a provisional patent, as it is cheaper.

What’s an inventor, she asks? A person who has a definite and conception of the invention and can describe to others how to practise invention. Patents can be invalidated if inventorship is incorrect and error reflects deceptive intent. Patents can be used as both defensive and offensive tools. Patent portfolios are important to investors. Patent trolling is a legitimate way to earn revenue. Patents can be bought and sold. Companies can also join “patent pools” to combine their patents with each other for greater legal freedom of utilizing inventions.

TRADE SECRETS: trade secrets are information of commercial value that are not disclosed to the public—part of the value is that the information is unknown to the public and competitors. Examples of trade secrets include technology, formulas and recipes, client/customer information, and even “know how.”

To keep trade secrets, Susan says you must do so via contracts including your employees (use non-disclosure agreements). Mark documents as confidential, control access, lock doors and cabinets—it sounds Hollywood-style, but trade secrets are just that: secrets!

At 7:25pm, Susan notes that disadvantages include the fact that your technology can be reverse engineered, you can’t regain secrecy after something is exposed, and these secrets can be expensive to maintain. If you have an innovate idea, keep it secret regardless of whether it is or will become a trade secret. It never hurts!

If you want to turn your TS into a patent, be warned: once a patent goes through, you lose its associated TS all over the world. Susan’s presentation ends a touch abruptly in the name of time.

Mario Kasapi of UBC begins his portion of the presentation at 7:35pm following a brief break as he prepares to discuss commercialization models, namely licensing. How will you commercialize your IP? Three ways: integrator, orchestrator, and licensor.

LICENSES: Are you going to license or assign your IP? These two methods differ in fundamental ways, Mario says. An assignment shifts the ownership in the IP from the assignor to the assignee. Assignments are preferred to licenses by IP purchasers, by investors, and acquirers, although IP owners prefer to license technology.

Licenses form a special form a contract. The licensor retainers ownership of the IP. There are few limits on the possibilities of license terms.  The main provisions of a license are term (how long will your license last for?), exclusivity (licensing to one or multiple companies?), scope of use (what will licensee be allowed to do with the IP?), territory (where will your licenses be active?), fees (fixed, royalties, mixed?), modifications or improvements (can the IP be changed while under license?), transferability (will you restrict your license or make it saleable to third parties?), indemnifications, and termination (under what circumstances will you end the license early).

To manage your IP, start good management practises now, Mario says! Keep good records. Watch your contracts. Maintain a due diligence binder. This will allow you to raise investment capital more easily and discourage IP thieves.

Browse Categories