silicon halton meetup 68 - ip for it
TRANSCRIPT
www.siliconhalton.comlinkedin/siliconhalton@siliconhalton
Meetup #68: IP for IT: What really matters
• Welcome• Thank you’s• Announcements• Keynote
– Matthew Graff, Partner
• G2KYM• Mark Your Calendar• Networking
Agenda
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Meetup #67
contributorSH
You?
Announcements
Announcements
Keynote
Meetup 68Matthew Graff, Partner @bereskinparr
Bereskin & Parr LLP13
Silicon HaltonMeetup #68: IP for IT
Matthew Graff
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Intellectual property
• Basic nature of IP rights– Rights of exclusion– Rights granted to the originator (but transferable)
• Policy rationale– Economic incentive to encourage the creation of intangible
goods– Protection – consumers, authors, inventors– Entitlement – idea that a person who creates intangible goods is
entitled to control the results of their work and profit from it
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Types of IP
• Technology-related IP– Patents– Industrial Designs– Trade Secrets
• Branding-related IP– Trademarks– Domain names
• Works of Composition IP– Copyright
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Trademarks
• Word mark
MICROSOFT
• Design mark
• Word/design mark
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Trademarks
• What is this?
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Trademarks
• A mark that distinguishes the goods or services of one trader from the goods or services of other traders
• Can be a word, symbol, design, or a combination of elements• Pick a ‘clean’ mark• Registration optional, but provides advantages• Big changes on the horizon for Canada
– File applications now
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Copyright
• Protects fixed expression of an original work– No protection of mere ideas
• Stop others from reproducing the work or a substantial part thereof• Can provide protection for:
– software– database structure (selection and arrangement of data)– website structure, layout and content– user guides / instructions– print and video advertising, jingles, theme music
• In most countries, right arises automatically upon creation of the work
• Term is life + 50 years (generally)
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Industrial designs
• Industrial designs (Canada) versus design patents (U.S.)• Features of shape, configuration, pattern or ornamentation in a
finished article, that appeal to and are judged solely by the eye• Dog coats and computer icons, GUI arrangements• Apple v. Samsung
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Patents
• Protects new, inventive and useful products and technologies• Limited time monopoly in exchange for public disclosure • Powerful rights that cannot be defeated by ignorance of patent or
independent invention• Patents are national rights, and in most countries the application is
examined
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A patent is not…
• A right to make the thing patented– Patents confer “negative rights”, meaning patent owners are still
subject to the rights of owners of existing patents– If you obtain a patent for an improvement on an existing
invention, you must obtain a license to use the existing invention• Invulnerable
– Patents are always open to challenges of invalidity• Fully effective without enforcement
– Patent holder must be willing to pay costs of enforcing patents
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Patent advantages
• Offensive– Stop others from using your inventions– Licensing
• Defensive– Cross-licensing
• Marketing– Patent as an asset– Business optics– Investor confidence– Consumer confidence
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Patent realities
• Costs• Time commitment• Delay• Must have an invention• Enforcement• Validity challenges• Issues with software patents
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What?
• Selecting inventions to patent– Is it core technology?– Popularity/competitive advantage of technology– Lifecycle of technology– Barriers to entry for competitors– Ability to detect infringement
• Commercial versus technical considerations– Patentability requirements
• Improvements
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When?
• Where do I want protection?– 1 year grace period in Canada, U.S. and very limited number of
other countries• Europe/Asia
– Requires inventions to have never been disclosed before filing– “Absolute novelty”
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Where?
• U.S. and Canada• Places where you or your competitors do business• Offshore manufacturing• Must be practical
– Filing broadly is costly– International application (PCT) if 3 or more countries
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Software patents
• Subject matter eligibility– law of nature, natural phenomenon, abstract ideas
• What is and isn’t “abstract”?– performance of business practice known from the pre-Internet
world along with the requirement to perform it on the Internet (Bilski; Alice)
– process for data compression• Despite uncertainty, big software companies are amassing large
patent portfolios
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Living with other’s patents
• Manage risk of infringement for new products• Patent litigation is extremely costly• “Freedom to operate”• Exhaustive searching is not feasible• 18 month secrecy window• Deal with problems as they arise
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Ownership
• Incorporate• Get it in writing before the IP is created
– Consultancy arrangements• Joint development of improvements• Exclusivity, residual knowledge
– Employment• Ownership transferred by paper assignment or employee
contract• Require all employees to enter into IP ownership and confidentiality
agreements– Agreements signed as a condition of employment on initial hiring– Ensure that engineers and researchers keep careful records of their
work
Bereskin & Parr LLP
Matthew Graff | Partner
905-817-6107
Thank you
Jeff BulzakMarketing Automation & Customer Acquisition Consultant, Geek, Entrepreneur, Giver, & Start-up Supporter@BZKGroup
Derek Lee
2275 Upper Middle Road East – Suite 101Oakville, Ontario L6H 0C3
mediarezstudio.com
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Meetup 69
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