Intellectual Property Case Study

Why IP Should Matter to You CREATE training program in Climate Science

(TPCS)

StFX Industry Liaison OfficeAndrew Kendall

CIPO Case Study

• Who I am (and what I do)

• Intellectual Property (and why it really matters)

• Case Study

University Inventions

Canadian University Inventions

What is intellectual property?• any form of knowledge

or expression created with one's intellect.– Inventions– Literary– artistic – musical – visual works– computer software– Trademarks– "know-how"

Patents

A patent is a “contract” between the inventor and the Government (Patent Office)

Patents

A patent allows the inventor(s) to have a monopoly in manufacturing and selling the invention from the date the patent is granted to a maximum of 20 years from the day on which the patent application was filed.

Patents

Consideration for the contract:

Inventor agrees to disclose fully the invention to the public – “fully” is the operative word

Patents

In exchange, the Government grants for a “limited time” a “limited monopoly” on the invention to the inventor if certain “patentability tests” are met

Prerequisites for a Patent

UtilityNoveltyInventive Step

What Can be Patented(from CIPO Web Site)

Yes• New kind of lock

• Apparatus for building door locks

• Process for lubricating door locks

• Method of making door locks

• Improvements of any of the above

No• E = MC2

• Romeo and Juliet

• A business plan

Barracuda Fights Trend Micro Patent Infringement Allegations By Stefanie Hoffman,

8:04 PM EST Tue. Jan. 29, 2008

In the face of a pending investigation by the U.S. International Trade Commission, Barracuda Networks publicly announced it plans to defend itself against Trend Micro's accusations of patent infringement, claiming that the case attacks the open source community.

EOLAS SUES MICROSOFT FOR INFRINGEMENT OF PATENT FOR FUNDAMENTAL WEB BROWSER TECHNOLOGY THAT MAKES "PLUG-INS" AND

"APPLETS" POSSIBLE Chicago, IL, (February, 2, 1999)

BlackBerry maker, NTP ink $612 million settlementResearch in Motion averts shutdown of wireless e-mail service, announces fourth-quarter warning.March 3, 2006: 7:29 PM EST

- BlackBerry maker Research in Motion said Friday it agreed to pay $612.5 million to patent holding company NTP to settle a long-running dispute that had threatened to shut down the popular wireless e-mail service for its 3 million users.

Apple, Others, Hit with Remote App Activation Patent Infringement SuitDecember 15th, 2009 at 9:00 AM - News by Jeff Gamet Apple, Adobe, Microsoft and several other companies were hit with a patent infringement suit on Monday by BetaNet for violating a patent it owns. The case alleges the companies are violating a patent that describes a process for securely activating software remotely, according to The Loop.

Samantha Chang Case Study

• What are the relevant facts in the case?

Samantha Chang Case Study

• What are the general issues that need to be decided?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?

Samantha Chang Case Study1. Why is Samantha’s idea a patentable invention since it is using existing technology?2. Should Samantha sign the documents? If she does will they be legally binding? 3. If Samantha doesn't sign, what will happen? 4. Who owns the invention if Samantha does sign?

Who should own the invention? Who has rights to the invention? What are those rights?

5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?7. If you were advising Samantha, what points would you suggest she consider?