Why intellectual

property matters and

how to maximize the

value of it!

Building a prosperous and innovative Canada

Indo-Canada Chamber of Commerce

Darlene CarreauDirector General,Business Services Branch

Feb 12, 2019

TODAY’S

DISCUSSION

2

• Why IP matters?

• Canadian Intellectual Property Office

(CIPO)

• Types of IP

• IP Strategy

• IP Commercialization

• CIPO Resources

AGENDA

There is a need for innovators to better

understand the IP process, making start-

ups and scale-ups more strategic about

IP… Compared to international peers, we need to do a better job about educating

our businesses to build IP literacy, and

build IP into their business plans.

Minister Bains, G&M (March 24, 2017)

INNOVATION AND IP

“”

3

WHY IP

MATTERS?

WHY IP MATTERS

4

• 4 times more likely to

export

• 2 times more likely to be

high-growth

• 27% more likely to seek

financing

• 27% of SMEs hold formal IP (2% patents, 9% trademarks,

and 1% ID)

IP use

• 78% of SMEs indicate that they are familiar with at least one

type of IP

IP awareness

• Of the 31% of companies that innovate, around half hold formal IP

Strategic use of IP

(Source: Survey on Financing and Growth of Small

and Medium Enterprises: Statistics Canada, 2017)

Small or medium-sized

enterprises (SMEs) that

hold formal IP

IP KNOWLEDGE GAP

WHY IP MATTERS

5

WHY SHOULD YOU CARE ABOUT IP?

It is a valuable business asset to:

Give you an edge over the competition

Help build a reputation and goodwill

with your partners and clients

You can use IP to:

Attract financing

Strategically achieve business goals

Secure your markets

WHY IP

MATTERS?

WHY IP MATTERS

INNOVATION, SCIENCE AND ECONOMIC

DEVELOPMENT CANADA (ISED)

Innovation and Skills Plan

2018 federal budget – New IP strategy

AccelerateSupport Help Promote

Canadian

innovators

Innovation through

superclusters

Innovation in key growth industries

Women entrepreneurs

grow their businesses

• IP awareness, education

and advice

• Strategic IP tools for growth

• IP legislation

6 CIPO

7

Examine and grant IP rights

Provide a quasi-judicial

function for trademarks and

patents

Raise awareness for the

effective use of IP

Share IP information to

support innovation

Represent CIPO

internationally to support

businesses operating globally

Through an enhanced IP

Awareness and Education

Program, with the goals that

Canadian innovators and

businesses be:

• more aware of the value

of IP

• better equipped to make

informed decisions about

their IP strategy

• increasingly seeking IP

protection

CIPO MANDATE

CIPO

WHAT IS IP?

Intellectual property (IP) is a creation of the mind.

TRADEMARK PATENT COPYRIGHTINDUSTRIAL

DESIGNTRADE

SECRET

A “sign” used to

differentiate your

products and

services from those

of other companies

For new, useful

inventions that

are not obvious

Original workOriginal visual

features of shape,

configuration,

pattern or

ornament as

applied to a

finished article

Confidential and

valuable business

information

8 TYPES OF IP

Plans and actions designed to maximize the

value of IP to achieving business objectives:

Take inventory of intangible assets and identify your commercial strengths;

Know the IP holdings and strategy of

your competitors.

Implement an IP Strategy to maximize the positive impacts of IP on revenue, competitiveness and reputation

Monitor & enforce your IP rights

9 IP STRATEGY

WHAT IS AN IP STRATEGY?

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• IP Administration – Are you protecting your IP? Which IP

are you going to protect?

• IP Valuation – Are you coordinating/aligning your

strategy?

• IP Management – Are your rights layered out? Are you

leveraging your designs/rights? Do you have an IP

strategy and an IP portfolio? How do you

communicate it to your employees?

• IP Monitoring – Are you monitoring your rights?

• Enforcing IP – Are you making sure that you are

enforcing your rights?

IP STRATEGY

IP STRATEGY:

QUESTIONS TO ASK YOURSELF

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• seek patent protection on technical aspects key to product base, ability to shut competitors out

Protect technical aspects

• seek trademark and/or copyright protection. This will help protect the value that is built through brand recognitionFocus on brand value

• aggressively enforce IP rights against competitorsFile protection for

offensive purposes

• rely on IP rights if competitors sue, provides freedom to operate and threat of countersuit

File protection for defensive purposes

• dependent on product, budget & sectorCombination of

IP rights

• put into the public domain (especially if there is rapid IP turnover); focus on first mover advantage, build brand loyalty and customer base

Do not file any IP protection

IP STRATEGY

POSSIBLE IP STRATEGIES

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COMMERCIALIZING

YOUR IP TURNING INNOVATION INTO DOLLARS

So you’ve spent your hard earned

dollars and energy protecting your

invention or creation…

… but now what?

IP COMMERCIALIZATION

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WHAT IS IP COMMERCIALIZATION?

Turning your patents, trademarks, copyright, and/or

industrial designs into $$$ by:

• Selling your IP; OR

• Renting your IP

Not a “one-size-fits-all” journey

Lets you extract the full value out of your IP

IP COMMERCIALIZATION

• Assignment = transferring rights from one entity to another, usually in

the context of a sale

• Analogy: The sale and purchase of a home, is also an assignment

of property

• The assignor (seller) gives up ownership of the IP through the sale to

the assignee (buyer).

• Analogy: Home Purchaser = Assignee AND Home Vendor =

Assignor

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THE “ASSIGNMENT” PATHWAY

IP COMMERCIALIZATION

• Licensing = “partnering up” with another organization in order

to make money together from your IP

• Owner of the IP = “licensor”

• Whom the IP is licensed to = “licensee”

• Licensor rents their IP to the licensee for a price, but without

giving up ownership to the IP

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THE “LICENSING” PATHWAY

IP COMMERCIALIZATION

• Exclusive Licence:

• Only one licensee has the right to use the IP. Not even the licensor can use

the IP after they’ve licensed it to the licensee

• Example:

• J.K. Rowling provided Warner Brothers Inc. with an exclusive

licence to the film rights to the Harry Potter novel series

• Non-Exclusive Licence:

• Licensor retains the right to work with the IP and grant additional licenses

to the IP to 3rd parties; licensee(s) can work with the IP as well

• Example:

• Purchasing a CD or online music gives you a non-exclusive

licence to listen to the musical work

• Sole Licence:

• Licensee can work with the IP, and so can the licensor, but precludes the

issuing of more licenses to 3rd parties

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LICENSING: DIFFERENT KINDS OF

LICENCES

IP COMMERCIALIZATION

• IP valuation = estimating the value of your IP

• Some situations that call for an IP valuation include, but are

not limited to:

• The sale or licensing of IP;

o Applying for financing/loans;

o IP infringement case;

o Taxes; and

o Internal management of IP assets.

17

CRITICAL STEPS: IP VALUATION

IP COMMERCIALIZATION

Three common methods to IP valuation:

Cost approach

Market approach

Income or economic benefit approach

CRITICAL STEPS:

COMMON IP VALUATION METHODS

IP COMMERCIALIZATION18

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Tools and information to

better acquire, manage

and leverage your IP assets

• IP Toolkit • Doing business abroad

guides• IP roadmaps• Business Development Bank

of Canada (BDC)-CIPO IP game

• BDC-CIPO IP strategy assessment tool

• Tech transfer toolkit (coming soon)

Suite of seminars and

training services for

businesses

• Seminars and webinars• IP boot camps • Search-a-thons• Case studies• Success stories• Custom training programs

Connect with IP experts to

answer your questions

• Contact the Client Service Centre for general IP information and guidance on the application process

• Connect with an IP advisor to receive help with understanding the value of your IP and guidance as you develop your IP strategy

Attend IP learning eventsAccess IP resources Speak with an IP expert

IP AWARENESS AND EDUCATION

PROGRAM

Focus on inclusive growth by targeting efforts to reach high-growth sectors, technology clusters, high-potential SMEs, key markets, women entrepreneurs, and Indigenous people

CIPO RESOURCES

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SPEAK WITH AN IP EXPERT

Connect with IP experts to answer your questions

IP ADVISORS CLIENTS

RYAN SHAUGHNESSYPacific region

MARNIE FYTENPrairies and Northern region

ALEXIS BLACKWaterloo region

DUMITRU OLARIUToronto region

CAROLINE LEFEBVRENational capital region

XAVIER GENESTQuebec region

CATHERINE VARDYAtlantic region

CIPO RESOURCES

CIPO

OPPORTUNITIES

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IP awareness and education partnerships

• Over 25 partnerships and collaborations

across sectors (private sector, incubators,

accelerators, business associations,

academia, research, government, etc.)

• Partnerships include:

- Co-development and co-presentation

of IP products and services

(ie. IP success stories)

- Embedding of IP into existing programs

- Promotion of IP-strategic benefits to

businesses

FOSTERING PARTNERSHIPS

CIPO

OPPORTUNITIES

CIPO RESOURCES

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HOW CIPO SUPPORTS INNOVATION

For IP tools, resources and information for

business, visit Canada.ca/ip-for-business.

For more information on going global with

your IP, visit Canada.ca/export-ip.

Find more programs and support for

Canadian businesses and innovators at

innovation.canada.ca.

CIPO

OPPORTUNITIES

CIPO RESOURCES

Contact CIPO

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• Canada.ca/intellectual property

• Client Service Centre

Phone: 1-866-997-1936

• In-person meetings by appointmentCanadian Intellectual Property Office

Place du Portage I

50 Victoria St., Room C-229

Gatineau, QC K1A 0C936

• IP Advisors and Partnerships

Joanna Baker – joanna.baker@canada.ca

Find more programs and support for Canadian

businesses and innovators at Canada.ca/business

Other CIPO events: Search “CIPO calendar of events”

@CIPO_Canada CIPO