UNDERSTANDING INTELLECTUAL PROPERTY · Co-operative Model Licensing Model Transfer Model Partners to Commercialize IP Joint Venture, Partnership, etc. IP Owner Grants License in IP

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”


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



• US Patent 5,307,162 • Cloaking system using optoelectronically controlled

camouflage



• U.S. D558,756 for Electronic Device


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


Intellectual Property 101: Trade-marks


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


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


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


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


Commercialization Matrix

Do It Yourself Model

Higher

Participation in

Commercialization

Lower

Participation in

Commercialization

Transfer ModelCo-operative Model Licensing Model


Commercialization Matrix(cont’d)


Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


100% IP Ownership




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

100% IP Ownership 0-100% IP Ownership




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

100% IP Ownership 0-100% IP Ownership 100% IP Ownership




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


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”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


“Sp

in o

ff”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


“Sp

in o

ff”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


Control

Risk

Total

%Retu

rn100%

“Sp

in o

ff”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


Control

Risk

Total

%Retu

rn100% 100%

“Sp

in o

ff”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


Control

Risk

Total

%Retu

rn100% 100% 100%

“Sp

in o

ff”




Higher

Participation in

Commercialization

Lower

Participation in

Commercialization


Partners to

Commercialize IP

Joint Venture,

Partnership, etc.

IP Owner Grants

License in IP

IP Owner Transfers

IP

Unrelated Party

Related Party


Control

Risk

Total

%Retu

rn100% 100% 100% 100%

“Sp

in o

ff”


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”?


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


“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


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


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


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


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


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


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


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


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

[email protected] [email protected]


MARK PENNERPartner | Patent Agent | Trade-mark Agent

[email protected]

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.


Documents

UNDERSTANDING INTELLECTUAL PROPERTY · Co-operative Model Licensing Model Transfer Model Partners to Commercialize IP Joint Venture, Partnership, etc. IP Owner Grants License in IP