aia2018 - intellectual property - nadiya farah & rosena nhlabatsi & jim keating

Qatar Foundation Research Strategy & Innovation Management

Rosena NhlabastiIP Portfolio & Agreements ManagerQatar Foundation R&D

Jim KeatingCommercialisation ManagerQatar Foundation R&D

Nadiya FarahIntellectual Asset ManagerQatar Foundation R&D

INTELLECTUAL PROPERTY & TECHNOLOGY TRANSFER

Intellectual Property: Ownership

Who Owns ‘Your’ IP?

Controlling IP Ownership in Agreements

(1) Employees(2) Developers(3) Consultants(4) Founders(5) Etcetera

Make sure IP rights are Transferred to the Company

Can You Practice ‘Your’ IP?

Freedom-to-Operate in a nutshell

● Risk Analysis- Do your actions infringe somebody’s else IP?● Searcher assesses products or service, identifies claims in existing Patents

Why Analyze your FTO?

• Startups can identify paths for further development• Understand competing products-Licensing negotiations• Avoid Lawsuits

Do a patent search –Google Patents

Someone claims infringement

What If You Have No Control Over IP Ownership?

Investors Review Your IPCompetition CopiesLawsuit


Intellectual Property: Protection

What is intellectual property?

Why should you care about intellectual property?• Intellectual capital• Exclusive rights - stop third parties copying, creating knockoffs

Creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce.

• Patents• Copyrights• Trade Secrets• Trademarks

Legal Rights Given by a

Country known as:

IP toolkit

Name, logo, shape, product packaging, technical solution, article of manufacture….. protection can be layered

• Subject matter• Eligibility• Duration• Infringement

Utility Patent

Trademark

Design rightsCopyright

Design Patent(U.S)

Trade Secret

IP toolkit

Utility Patent

Trademark

Design rightsCopyright

Design Patent(U.S)

Trade Secret

Trade Secrets

Protects commercially valuable information.

True Religion jeans design patent

• Subject matter: financial, business, scientific, technical, economic, engineering information

• Scope: excludes lawful acquisition such as reverse engineering, independent discovery

• Eligibility: [1] Reasonable measures to keep secret, [2] valuable because it is secret

• Duration: as long as secret• Infringement: misappropriation (subject to unlawful acquisition, use or

disclosure)

• US Defend Trade Secrets Act May 16 2016 (“US-DTSA”)

• EU Trade Secrets Directive May 27 2016 (“EU-TSD”)

• Qatar Law No. 5 of the year 2005 on Protection of Secrets of Trade.

• Article 7: "It is not permissible for anyone to obtain, use or divulge trade secret by illegal way without the prior consent of trade secret holder” Includes obtain trade secrets from a third party.

• Article 8: damages and injunctive relief.

• Article 6: requirement to take necessary measures to keep the information secret

Patents: A “deal" between an inventor and the government


Inventor teaches public and government how to use the invention.

The government gives inventor an exclusive right

to make, use and sell the invention for a

limited time.

Patents

Protection of a technical “invention”

• Subject matter: structure, composition, function of an invention• Scope: broad• Eligibility: [1] New, [2] non-obvious, [3] useful, [4] public principles• Duration: 20 years from filing date• Infringement: Literal infringement, or, infringement under the doctrine of

equivalence

What if your product has design features that are ornamental not functional……


What can be patented?

Methods or process, which are ways of doing things in one or more steps. Examples: heat treatments, chemical reactions, ways of making a product or software that comprises steps to affect hardware or a process.

Machines, which are devices used to accomplish a task. Examples: cigarette lighters, robots, desalination plants, clocks, cars, boats, telephones and lasers.

Articles of Manufacture, which are items that made by human hands or machines. Examples: Erasers, desks, houses, wires, tires, books, cloth and containers.

Compositions of Matter, which are chemical compositions, conglomerates or aggregates. Examples: chemical compositions, road base, gasoline, glue, paper, soap, drugs, animals, plastics and synthetic genes.

New Uses for any of the Above, which are new and unobvious processes or methods for using a known invention. Examples: using aspirin as growth hormone for pigs or using a powerful vacuum to suck mice out of the ground.


What can’t be patented?

• Processes performed solely with the mind• Naturally occurring phenomena and articles• Laws of nature, abstract mathematical principles• Process that don’t transform something to another thing• Arrangements of printed matter• Plan computer instructions or algorithms (must be presented as a

method)• Ideas alone (must show how it is made or used in tangible form)


PCT - The international patent system

International protection process

• Patent Cooperation Treaty: a system for filing and processing international patent applications. A national or resident of a contracting state can file an international (PCT )application

• File with national patent office of the contracting state of which you are a national or resident

• Claim priority for future foreign designation applications under the Paris Convention 1883• Equal status: the international application has the same effect in each designated state as if

a national application had been filed with national patent office• 152 member states

• GCC centralised patent system - Riyadh GCC Patent Office (GCCPO):• Has received over 33,000 applications between 1998 and 2017• Approximate costs:


PCT - The international patent system


Patent costs


• Patentability searching prior to filing: approx $500• US utility patent application (attorney fees): approx $5000-$15000• PCT applications may be at the lower end of this.• US provisional application (attorney fees) approx $1000• Other costs:

• Converting a provisional to a non-provisional application• Filing fees at the patent office

• Provisional application filing fee $100• Full application filing fee: $710 for small entities

• Examination of the application by patent office:• Increasing maintenance fees at 3.5 years $800, 7.5 years $1800, 11.5 years $3700

(U.S.); before grant (EPO); in each country where patent validated

Industrial designs/Design Patent

Protects the overall look of an article of manufacture: “New, original ornamental designs” (35 U.S.C. §171)

• Subject matter: (non-functional) configuration or shape of an article, surface ornamentation applied to an article, or combination of configuration and surface ornamentation

• Eligibility: [1] New*, [2] ornamental, [3] non-obvious over existing prior art designs.

• Duration: 15 years from date of grant• Infringement: Substantial similarity to the patented design from perspective of

ordinary observer


RIM Blackberry design patent True Religion jeans design patent

Industrial Designs in the GCC

• Subject matter: article,of manufacture• Eligibility: [1] New [2] individual character, [3]

non-functionality doctrine applies*• Duration: UDR: 3 years from public disclosure; RDR: 5

years from filing – renewable every 5 years up to 25 years• Infringement: Whether the infringing design creates the

same "overall impression" on the informed user


Copyright

• Subject matter: original works of authorship (literary, dramatic, musical, and artistic works)

• Scope: broad• Protects: artistic creations of authors and

artists (if original)• Eligibility: [1] Fixed, [2] original authorship

(independently created)• Duration: Life of author + 70 years• Infringement: Substantial similarity


Trademarks

• Subject matter: goods and services (Words, signs, 3D shapes (product design), colours and other indicia of origin)

• Scope: narrow (territory and class specific)• Protects: the distinctive non-functional features that relate to and indicate the

source of origin of a product/service.• Eligibility: [1] Constitutes a trade mark [2] distinctive character [3] indicates source

of origin• Duration: 10 years - renewable forever as long as used• Infringement: Likelihood of consumer confusion as to source of the goods (as they

appear in the market)


Purpose of trademark protection


• Protect consumers from confusion as to origin (source identifier):

• EU Trade Mark Directive, recital 11: “The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin. ”

• Protect a producer’s goodwill:

• U.S.: to ensure that “where the owner of a trademark has spent energy, time and money in presenting to the public the product, he is protected in his investment from its appropriation by pirates and cheats.” (S. Rep. No. 1333, 79th Cong., 2d Sess. 3 (1946))

• Reduce consumer search costs:

• Easily identified trademarks reduce the costs consumers incur in searching for what they desire, and the lower the costs of search the more competitive the market. A trademark also may induce the supplier of goods to make higher quality products and to adhere to a consistent level of quality” (Scandia Down Corp v Euroquilt, Inc., 772 F.2d 1423 (7th Cir. 1985)).

• Origin, quality, communication functions (lifestyle, attitude, trademark image)

Why register? What third party use can you prevent?


• Three types of use:

1. Double identity (territory and class-specific),

2. Identical/similar + likelihood of confusion (territory and class-specific),

3. Identical/similar irrespective of territory or class if your mark is famous and “use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

Trademarks: what are distinctive signs?


• Descriptive:

- “Makes clean’

- SPEX optician’s services

• Arbitrary

- ‘Diesel’ for jeans

- ‘Camel for cigarettes’

- ‘Apple’ for computers

• Fanciful

- ‘kodak’

- ‘google’

• Generic

- ‘apple’ for apples

- ‘camel’ for camels

- ‘diesel’ for petrol

- ‘yellow pages’

Shape “3D” trade marks and distinctive character

● Protection of 3D shapes is possible by trademark protection, but generally there is a higher threshold to reach for protection as inherent distinctiveness is difficult to prove (generally considered indistinctive). The applicant must prove acquired distinctiveness through use.

● Does the shape of a chocolate rabbit with a red ribbon have distinctive character? The CJEU said ‘no’ (May 2012)

● In order to possess distinctive character, the mark’s features must “depart significantly from the norms or customs in the sector of the contested goods”. *

True Religion jeans design patentJanuary 2017, UK Appeal Court

December 2011, European General Court (EGC)

Shape “3D” Trademarks

Can the design and layout of a retail store be a trademark? U.S. and Europe have both said ‘yes’ to the Apple store layout

Store trade dress: “total image” or “overall appearance” of a place provided the design serves as an origin indicator (e.g. restaurant, store interior design)


Do a trademark availability search

• Legal risk: similar, identical, double identity, reputation• Knockout search (for any ‘identicals’ or ‘highly similar’ marks)• Full availability search based on your goals

• TMs are territory-specific and class-specific• Territory: is the proposed TM available in the relevant market?• G/S: can it be used without infringing on existing local TMs?


Where should you register?

• Filing nationally: Under Article 4 Paris Convention, you can claim priority date of first national application for a later filing in a PC country, but only if you file your additional applications within 6 months

• GCC: 6 registers• EU: 28 registers (EUTM register, Benelux, 25 national

registers, International register {WIPO})• U.S.: 1 register

Note: non-use requirement. Rights lost for non-use in Europe and GCC after 5 years, 3 years in the U.S.


Fees?

• EU: a ‘pay per class’ system (0CT 2017 Amending Regulation introduced a one fee per class system for application fees and renewal fees). Fees required for renewal (same as application), opposition, cancellation, appeal.

• Application 850EUR first class, 50EUR second class, 150EUR third class, 150EUR fourth and subsequent classes.

• Opposition 320EUR; Cancellation 630EUR; Appeal 720EUR.• US: $225-$400 per class.• Qatar: QAR1000 (trademark or service mark); QAR1500 (group mark), QAR3000 (collective

mark)


Design Rights (Europe)

Protects the look of an article of manufacture:

• Subject matter: article,of manufacture• Eligibility: [1] New [2] individual character, [3] non-functionality doctrine applies*• Duration: UDR: 3 years from public disclosure; RDR: 5 years from filing –

renewable every 5 years up to 25 years• Infringement: Whether the infringing design creates the same "overall impression"

on the informed user



Intellectual Property: Investors

What IP Means to Investors

• Collateral—some guarantee that others can’t copy what you are doing• Building monopoly position—blocking others from entering a market• Discouraging others from entering a market—defensive/offensive patenting• Communicating innovativeness/uniqueness to investors, partners, and

customers• Creating marketing messages and becoming more visible in the market• Strategy—effectively communicates strategic approach internally/externally• Provisional protection of an invention (pending application)—fast, easy, and

versatile• Preventing lawsuits (if you have a patent, you are not infringing) • Good performance metric for companies/individuals• Value—patent “thickets” can be extremely valuable, increasing attractiveness

as M&A target• Licensing revenue—this can be another source of revenue for the company • Intangible assets are becoming THE most valuable assets

• Burdensome patenting costs can be a liability not an asset

• ROI—what return do you expect from your patent portfolio?

• Management of a large portfolio requires time, expertise, and $$

• You need a good strategy or you will just have a pile of patents

• Not all patents have value—most do not. If you can’t license it, there’s a good chance you can’t give it away (there is no such thing as a free horse)

However…too much of a good thing might not be good

• “Smart” money is the best money

• Too many cooks can spoil the broth

• Investment docs need signatures—you will progress at the speed of your slowest investor

• Messy cap (ownership) tables can discourage future investors

What to do with multiple investors…

• Choose people you want to work with• Investors with domain experience are the best• There will be difficult times—make sure they

can weather the storm• Do they have the capital to participate in future

funding rounds?• Dealing with multiple personality types is part of

the process

aia2018 - intellectual property - nadiya farah & rosena nhlabatsi & jim keating

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