View
0
Download
0
Category
Preview:
Citation preview
UNDERSTANDING INTELLECTUAL PROPERTYBuilding and Protecting Your Brand
Mark D. Penner
April 26, 2011
Overview
• Maximizing the commercial value of IP should be a priority for every business
• Effective branding and brand creation strategies are critical in a knowledge based economy
• Need Intellectual Property that effectively protects key aspects of your “brand”
• GOAL: Provide practical and effective tips to help businesses achieve/maintain competitive edge
This presentation contains statements of general principles and not legal opinions and should not be acted upon without first consulting a lawyer who will provide analysis and advice on a specific matter. Fasken Martineau DuMoulin LLP is a limited liability partnership under the laws of Ontario and includes law corporations.
UNDERSTANDING INTELLECTUAL PROPERTY - 2 - © Fasken Martineau 2011
Overview (cont’d)
• Intellectual Property 101• Commercialization • Intellectual Property in “Brand Building”
UNDERSTANDING INTELLECTUAL PROPERTY - 3 - © Fasken Martineau 2011
INTELLECTUAL PROPERTY 101
April 26, 2011
Intellectual Property 101: Patents
• Limited statutory monopoly to exclude others from making, using, selling or offering to sell the “invention”
• Term = 20 years from the date of filing • subject to payment of applicable fees
• Patents protect the functional aspects of inventions• Design patents or industrial design registrations
protect aesthetic (non-functional) aspects of useful articles
• Do not confer any right to practice the claimed invention
UNDERSTANDING INTELLECTUAL PROPERTY - 5 - © Fasken Martineau 2011
Intellectual Property 101: Patents
• US Patent 5,307,162 • Cloaking system using optoelectronically controlled
camouflage
UNDERSTANDING INTELLECTUAL PROPERTY - 6 - © Fasken Martineau 2011
Intellectual Property 101: Patents
• U.S. D558,756 for Electronic Device
UNDERSTANDING INTELLECTUAL PROPERTY - 7 - © Fasken Martineau 2011
Intellectual Property 101: Trade-marks
• Indicia (e.g. brand name, logo, sound, color, etc.) used to distinguish the wares and services of one trader from those of another
• Term = indefinite• Used to identify the source of a particular
offering of wares and/or services• “Common Law” Rights
• Arise from use of a trade-mark in the marketplace• More limited than statutory rights
• Statutory Rights• Arise from registering or applying to register a trade-
mark with the Canadian Intellectual Property Office
UNDERSTANDING INTELLECTUAL PROPERTY - 8 - © Fasken Martineau 2011
Intellectual Property 101: Trade-marks
UNDERSTANDING INTELLECTUAL PROPERTY - 9 - © Fasken Martineau 2011
Intellectual Property 101:Copyright
• Literary, dramatic, artistic and musical works• Art, books, photos & movies, music, computer
programs, screen displays, instruction manuals, compilations of information etc.
• Copyright owner granted the sole right to reproduce, perform or communicate for the term of protection
• Term = Life + 50 years
UNDERSTANDING INTELLECTUAL PROPERTY - 10 - © Fasken Martineau 2011
Intellectual Property 101: Trade Secrets
• Not restricted by subject matter or term• business plans• secret formulae (e.g. COCA-COLA®
beverage)• methods or processes of manufacture
• Must maintain confidentiality to have/maintain value• Confidentiality agreements or provisions to
guard against disclosure in agreements with researchers, employees, independent contractors, etc.
• Term = Indefinite
UNDERSTANDING INTELLECTUAL PROPERTY - 11 - © Fasken Martineau 2011
IP Needs To Fit The Business
• Intellectual Property = Business Objectives• Best Practice = T.I.P.P.
• Team Work: Work with other business areas (Executive level as well as Marketing, R&D, etc.) to identify priorities
• Involved: IP issued are involved early in business decisions
• Policies: Have clear policies dealing with IP ownership, disclosure and use
• Prioritize: Obtaining, maintaining and enforcing IP rights can be expensive and time consuming
UNDERSTANDING INTELLECTUAL PROPERTY - 12 - © Fasken Martineau 2011
COMMERCIALIZATION
April 26, 2011
Commercialization 101
• Understanding commercialization• Degree of Control• Allocation of Risk• Knowledge• ROI
• Commercialization Matrix• What the legal options involved in taking a
discovery to market
UNDERSTANDING INTELLECTUAL PROPERTY - 14 - © Fasken Martineau 2011
Commercialization Matrix
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
UNDERSTANDING INTELLECTUAL PROPERTY - 15 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
100% IP Ownership
UNDERSTANDING INTELLECTUAL PROPERTY - 16 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
100% IP Ownership 0-100% IP Ownership
UNDERSTANDING INTELLECTUAL PROPERTY - 17 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
100% IP Ownership 0-100% IP Ownership 100% IP Ownership
UNDERSTANDING INTELLECTUAL PROPERTY - 18 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 19 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 20 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 21 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
Control
Risk
Total
%Retu
rn100%
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 22 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
Control
Risk
Total
%Retu
rn100% 100%
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 23 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
Control
Risk
Total
%Retu
rn100% 100% 100%
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 24 - © Fasken Martineau 2011
Commercialization Matrix(cont’d)
Do It Yourself Model
Higher
Participation in
Commercialization
Lower
Participation in
Commercialization
Transfer ModelCo-operative Model Licensing Model
Partners to
Commercialize IP
Joint Venture,
Partnership, etc.
IP Owner Grants
License in IP
IP Owner Transfers
IP
Unrelated Party
Related Party
100% IP Ownership 0-100% IP Ownership 100% IP Ownership 0% IP Ownership
Control
Risk
Total
%Retu
rn100% 100% 100% 100%
“Sp
in o
ff”
UNDERSTANDING INTELLECTUAL PROPERTY - 25 - © Fasken Martineau 2011
IP IN “BRAND BUILDING”
April 26, 2011
Brand Building = Effective IP Protection
• Best Practice: Use of all facets of IP to create and protect the “brand”• Patents = monopoly on “function”?• Industrial Design = monopoly on
“look”?• Trade-marks = monopoly on “indicia”?• Copyright = monopoly on “works”?• Trade Secrets = monopoly on
“formula”?
UNDERSTANDING INTELLECTUAL PROPERTY - 27 - © Fasken Martineau 2011
Creating & Protecting Your “Brand”
• “Freedom To Operate” and Validity Searching• Existing Third Party Rights?• Prior Public Disclosures?
• Obtain IP Protection/Registration• “Patrol & Control”
• Use & Disclosure Policies • Monitor licensed use of IP• Monitor the use of your IP in the marketplace by
Third Parties– Counterfeit & “Grey” Goods– Internet Issues
UNDERSTANDING INTELLECTUAL PROPERTY - 28 - © Fasken Martineau 2011
“FTO” & Validity Searching
• Best Practice: Identify & Reduce Risks• Infringement of third party rights
– FTO searches• Ability to obtain IP protection
– Validity searches• Failure to Plan = Plan to Fail
– Increased costs– Re-branding– Loss of goodwill
UNDERSTANDING INTELLECTUAL PROPERTY - 29 - © Fasken Martineau 2011
TM Searching and Clearance
• Search the trade-marks register and/or marketplace to ensure no third party competing or superior rights
• Best Practice: Come up with more than one trade-mark before searching process and rank each
UNDERSTANDING INTELLECTUAL PROPERTY - 30 - © Fasken Martineau 2011
Confusingly Similar…
• Distinctiveness is the key to choosing an effective trade-mark• Cannot describe wares and services
– Cannot register trade-marks that clearly describe or deceptively misdescribe the character or quality of the wares and services with which they are used
• Cannot be “confusingly similar” with other trade-marks– Tempting to choose marks that are somewhat
confusing with established marks or that contain common elements
• Best Practice: Avoid descriptive, misdescriptive and confusing marks
UNDERSTANDING INTELLECTUAL PROPERTY - 31 - © Fasken Martineau 2011
Patent Searching and Clearance
• Search patent databases (USPTO, CIPO) to ensure no “prior art” (i.e. validity) and no third party rights (i.e. infringement)
• Best Practice: Conduct patentability and/or infringement analysis of key business assets prior to patenting and marketing
UNDERSTANDING INTELLECTUAL PROPERTY - 32 - © Fasken Martineau 2011
Counterfeiting & Grey Marketing
• Counterfeits not limited to “luxury brands”• electrical extension cords, batteries, toys,
pharmaceutical products, power tools, household electronics, toothpaste, medical equipment, brakes, etc.
• “Grey Goods” are legitimate goods sold into one geographical market and exported to another
• Best Practice: Monitor Use of IP to identify counterfeiters and “grey goods” and take all possible steps to stop unauthorized use
UNDERSTANDING INTELLECTUAL PROPERTY - 33 - © Fasken Martineau 2011
Domain Names & “Keywords”
• “First come, First Served”• Multiplication of top level domain names creates
opportunities for appropriation – .asia, .biz, .info, .mobi, .tel, etc.
• Can be used for “phishing”– Divert customers to competitors’ websites– Offer counterfeit products
• Search engines may sell “links” associated with a keyword • ADWORDS service offered by Google
• Best Practice: Consider obtaining range of domain names (alternative spelling, .ca, .com, etc.) in key jurisdictions and monitoring/purchasing keyword use
UNDERSTANDING INTELLECTUAL PROPERTY - 34 - © Fasken Martineau 2011
Proactive Steps
• IP Use & Disclosure policies• Does website provide Website Terms &
Conditions (“WTCs”) • Address branding and IP issues?• Detailed plain language guidance concerning your
IP?• Address potentially fraudulent behaviour?• Details on reporting potentially infringing
behaviour or fraudulent behaviour in connection with your IP?
• Best Practice: Have comprehensive polices and WTCs that address IP concerns
UNDERSTANDING INTELLECTUAL PROPERTY - 35 - © Fasken Martineau 2011
Summary
• SECURE IP PROTECTION• Patents, Trade-marks, Domain Names, etc.
• T.I.P.P.• Team Work, Involved, Policies, Prioritize
• UNDERSTAND COMMERCIALIZATION MATRIX• Degree of Control, Allocation of Risk, ROI
• IDENTIFY & REDUCE RISKS• Third Party IP, Use of Your IP
UNDERSTANDING INTELLECTUAL PROPERTY - 36 - © Fasken Martineau 2011
Contact Information for CIPO & IPIC
Canadian Intellectual Property Office
Intellectual Property Institute of Canada
Learn about IP Consult databases
Consult registered IP professionals to help you get the most from your IP
www.cipo.ic.gc.ca www.ipic.ca
1-866-997-1936 613-234-0516
cipo.contact@ic.gc.ca info@ipic.ca
UNDERSTANDING INTELLECTUAL PROPERTY - 37 - © Fasken Martineau 2011
MARK PENNERPartner | Patent Agent | Trade-mark Agent
416.868.3501mpenner@fasken.com
Biographies
Examples include therapeutic compounds and their uses (e.g. small molecule therapeutics, biopharmaceuticals, stereoisomers); chemical and biotechnological processes (e.g. in food production, heavy oil extraction, protein, gene and life form engineering); and recombinant biomolecules (e.g. antibodies, peptides, cellular recognition/adhesion proteins, angiogenesis and immune response modulators).In addition to patent prosecution, Mark also has extensive experience with preparing infringement, validity, freedom to operate and patentability opinions in the life sciences. On the enforcement side, Mark has been involved in Federal Court proceedings involving patent infringement and validity as well as Notice of Compliance proceedings under the Patented Medicines (Notice of Compliance) Regulations.His practice also involves the IP aspects of corporate transactions (e.g. financing, mergers & acquisitions and joint ventures) such as protection of confidential information, trade secrets and know how, conducting due diligence, as well as technology acquisition and licensing. Mark is registered to practise as a patent and trade-mark agent before the Canadian Intellectual Property Office and to represent Canadian applicants before the United States Patent & Trademark Office. Full Biography
Mark Penner is a partner in the Technology and Intellectual Property Practice Group with expertise in the acquisition, protection and enforcement of intellectual property rights in the chemical, pharmaceutical and biotechnology areas. His practice focuses primarily on the drafting and prosecuting of patent applications in this area of technology.
UNDERSTANDING INTELLECTUAL PROPERTY - 38 - © Fasken Martineau 2011
Recommended