ip management - entrepreneurship 101 (2012/2013)
DESCRIPTION
Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. Learn how to identify and manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage will depend on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations. Presented by Gilbert's LLP.TRANSCRIPT
IP Management:
Creating Value by Protecting Knowledge-‐Based Assets
November 21, 2012
Nathaniel Lipkus, Matthew Powell & Ashlee Froese
Understanding Intellectual Property
What is Intellectual Property?
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Canadian IP: By the Numbers
20 The percentage of Canadian science or technology businesses that have sought IP protection of any kind
1.14 The percentage of R&D expenditures by Canadian universities that are captured as revenues down the road (compare to 5% for the United States)
4.5 Billions of dollars in net licensing revenues that Canadian entities pay to foreign entities because Canadians are buyers not sellers of IP
17 Canada’s rank out of 24 developed nations on an OECD innovation scale (despite being 7th in R&D)
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Types of IP Protection
Your Business
Patent
Trademark
Copyright Design
Trade Secret
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IP = Value Capture
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$12.5 Billion ÷ 17,000 Patents $735K per Patent
$4.5 Billion ÷ 6,000 Patents $750K per Patent
Brand Value: $77.8 million (US)
Patents
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Patents A patent is used to control how an advantage
of a particular invention reaches the customer.
Exercise control by forcing competitor to: -‐ Eliminate advantage from their offering altogether;
-‐ Provide advantage only under license; or -‐ Find a different way to achieve advantage.
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Eureka?
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Invention means: -‐ New, useful, non-‐obvious machine, manufacture, composition of matter, art or process, or a new useful, non-‐obvious improvement in one of these things.
The Right Stuff
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Patentable Not Patentable Process for recursively sharpening an image in a digital camera.
A digital image of a sunset (See: copyright)
Process for arbitrating between con_licting keystrokes on a smart phone keypad using word rankings.
A stylistic wave icon displayable on a smart phone (See: trade mark or industrial design)
Process for streaming digital video to a wireless device.
A feature length digital _ilm (see: copyright)
Recessable, hinged legs on a computer keyboard
Layout of keys on a computer keyboard (See: industrial design)
Hand sanitizer formulation. Attractive hand sanitizer bottle (See: industrial design)
Shhh …
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Patent laws can be strict. Any of the following things, if done prior to _iling can result in an invalid patent:
-‐ Public disclosure of the invention; -‐ Use of the invention; -‐ Sale of the invention; -‐ Offering the invention for sale. Different countries have different requirements. BEST PRACTICE: _ile for patent _irst.
Patent Preparation and Filing
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1. Understand inventorship and ownership • Who has a right to be named an inventor? • Who has a right to own the patent?
2. Prepare patent application • Prepare description, drawings and claims.
3. File patent application • Paperwork + patent application + fees in each country. • Use fee-‐deferral techniques when patenting in more than one country.
4. Negotiate With Examiner(s) (“Prosecution”) • Will have to wait awhile to hear from Examiners (2-‐3 years sometimes). • Use progress with one Examiner to speed up examination elsewhere.
5. Receive Granted Patent
Should I Just Keep It Secret?
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Patent Trade Secret Details of invention published by patent of_ice after 18 months.
Details of invention can be kept secret forever.
Can stop others even if they come up with the invention independently.
Cannot stop others if they come up with the invention independently.
For inventions that would not be hard for a competitor to _igure out.
For inventions that would be extremely dif_icult for a competitor to _igure out.
Example: Using collets for bonding shaped substrates to a submount of a semiconductor.
Example: Method of applying forces to a semiconductor substrate for extremely fast bonding of light emitting diodes.
Branding
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Trade-‐marks
Ultimately, the trade-‐mark represents the reputation, quality and expertise of a
company.
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Nike Inc.
What Could Be a Trade-‐mark? Traditional Trade-‐marks
• Single word SUBWAY • Group of words BURGER KING • Group of numbers 967-‐1111 • Slogan DUDE YOU’RE GETTING A DELL • Design (with words)
• Design (without words)
Non-‐Traditional Trade-‐marks
Three-‐Dimensional Colors
Distinguishing Guise Sound
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The Sword and the Shield
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The Good, the Bad and the Forgettable
Descriptive
Suggestive Coined
Generic Descriptive
Suggestive Coined
Generic
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How to Best Protect your Brand
Obtain Trade-‐mark Registrations • Formalized protection of business asset • Increase value of your company • Registration certi_icate is evidence of ownership • Exclusive use • Rights are country-‐wide • Renewable registration periods • Access to Federal Court judgments • Springboard for international protection • Other avenues (domain name disputes, social media etc.)
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The Living Brand
• Use proper marking and ownership notices • Avoid genericization • Use trade-‐mark properly • Consistently use the trade-‐mark • Continue to use trade-‐mark properly • License properly • Police vigilantly • Audit the wares/services • Renew, renew, renew
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Ponder this…
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have in common?
POST-IT
ASPIRIN
KLEENEX
BAND-AID plasticine
zipper
escalator
What do:
Let’s Get Social
Ø 192 million domain names registered Ø 126 million online blogs Ø 27.3 million daily tweets Ø 350 million people on Facebook Ø 90 trillion emails sent in 2009
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Assumption Reality
Brand Inc.
BRAND.com twitter/BRAND Facebook/BRAND
.ca
.net .info
.mobi
.museum .jp .us
.co .me .uk
.eu .xxx
The Online Assumption
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Managing Intellectual Property
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Good Housekeeping Know Your IP • Use invention disclosure forms to capture inventions rather than rely on notebooks.
• Use spreadsheets to track brands, inventions, patent applications, patents, trademarks, copyrights, trade secrets
Ensure IP Ownership • Ensure IP being created at the instruction of the company by employees, outside contractors etc. is owned by the company
• Establishing formal, written agreements early reduces costly disputes later • Maintain a repository of employment agreements, outside contracts, nondisclosure agreements, supply agreements
Conduct Periodic IP audits
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IP Hurdles vs. IP Barriers
Survey the IP Landscape
Avoid barriers Overcome hurdles
Protect your own IP along the way
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Who owns background IP?
What patents/designs could block you?
What businesses are branding like yours?
Any big players to plan for?
Act early!
Can you license? Cross-‐license? Partner? Co-‐exist?
Can you invalidate blocking IP?
Any ways to insure?
Apple/Samsung
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The latest $1 billion damages award v. Samsung Sanctions against Apple by UK court Antitrust investigations into Samsung
AIDS in Developing Countries
1/3 of HIV pa8ents treated in developing world take a Gilead drug
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IP Gilead had developed breakthrough ARVs: Viread, Truvada – covered by patents around the world
Problem No infrastructure in developing world: 1,000-‐paEent penetraEon (and not for lack of trying)
Solu8on 15% developing country license to Indian manufacturers / discounts to wholesalers: led to generic penetraEon of 2.9 million
Thank You
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416 703 1100