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A Basic Primer for those interested in valuing IP- provides a survey of the legal tools and a summary of when they can be applied
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Mining Intellectual Property: The Key to Maximizing Core Valuein knowledge based industries
Andrea Rush, LLM.
Patent and Trade-mark Agent
Heenan Blaikie, Toronto
Preamble
This presentation will consider the role of legal counsel in “IP Mining” - valuation of intellectual property, especially in the knowledge based sectors. Careful scrutiny may determine that a company owns or licenses one or more forms of intellectual property rights. They are: patents, industrial designs, trade marks and copyright.
Context is everything- whether determining who owns the property, what it is, where the risks are, or the value. For example, certain subject matter- business methods – may not be readily patentable in Canada although protectable in other countries in which a corporation carries on business.
Owners define commercialization potential. Individuals, their employers, independent consultants, joint venture partners, and others may collaborate to commercialize the intellectual property. The roles of legal counsel are primarily identification, protection and enforcement so that value can then be quantified by other professionals.
INTRODUCTION
What is Intellectual Property?
Content of the human intellect deemed to be unique and original and to have marketplace value—and thus to warrant protection under the law. Intellectual property includes but is not limited to ideas; inventions; literary works; chemical, business, or computer processes; and company or product names and logos. ... [Microsoft Computer Dictionary, 5th Edition]
Patents, Trade-marks, Copyright, Industrial Designs
Types of IP Recognized Under Canadian Law Intellectual property refers to creations of the mind:
inventions, literary and artistic works and symbols, names, images and designs used in commerce. These rights are “property” in the sense that they are based on the legal right to exclude others from using the property and in that ownership of the rights can be transferred. The rights are “intellectual” in the sense that they protect intangible subjects, usually arising out of some form of human creativity.
PATENTS and
INDUSTRIAL DESIGNS
What is a Patent?
Provides the owner (patentee) with exclusive right (monopoly) to prevent others from making, using and selling an “invention” for a fixed period of time
Negative right only – may be subject to other rights Monopoly limited to jurisdiction covered by the grant (a U.S.
patent is not enforceable in Canada) Term of monopoly is 20 years from the filing date granted in Canada on first person to file basis For: a product or process that provides a new way of doing
something or offers a new technical solution to a problem, typically resulting in a vendible product
Functional aspects eg construction of a corkscrew [email protected]
What Can I Patent?
Protection available for almost any new, useful and “unobvious” method or apparatus absolute novelty in Canada, subject to one year grace
period for inventor-derived public disclosures obviousness imposes requirement of “inventive” effort
Patent protection not available in Canada for computer programs (per se), business methods, methods of medical treatment and higher life forms
other jurisdictions may be more progressive
What is an “invention”: Section 2 Patent Act
“invention” means any new and useful* art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.
-criteria: novelty, utility, statutory subject matter, non-obviousness/inventive ingenuity.
-economic result must be produced:
Patentable Subject Matter
-the invention may be embodied in equipment or apparatus
-medical diagnostic methods -protein, vaccine and lower life forms such as
bacteria and virus -method of ameliorating the adverse effects of age -apparatus for medical treatment
Non-patentable subject matter
-natural phenomena, laws of nature, scientific principles;
-computer programs if the discovery involved is a mere method of calculation;
-method of medical treatment; -professional skills and methods; -printed matter producing only an artistic, intellectual
or literary result; -human conduct or mental steps -higher life forms
Who Owns a Patent?
Typically, employer is the owner of the patent inventor may be owner if invention not created in the
course of employment independent contractor may be owner if employer did
not contribute inventive effort written contract recommended to avoid later disputes
Rights can be assigned or licensed in whole or in part
How Do I Get a Patent?
process initiated by filing application with Canadian Intellectual Property Office (administrative agency)
must describe invention in sufficient detail to allow a person of ordinary skill to implement it
must describe a preferred mechanism for practicing the invention
must define the monopoly rights desired (patent claims)
final form of patent claims is negotiated between the patentee and a Patent Office Examiner
legal document
What do I file with CIPO?
Rule 94(1) of the Patent Rules: (a) a petition (b) an abstract (c) a sequence listing (Par. 111(a) of the Patent Rules (d) a copy of a sequence listing in computer readable
form (Par. 111(b) of the Patent Rules (e) a claim or claims (f) any drawing referred to in the description (g) appointment of agent/ associate agent/rep.
Abstract : Summary in 150 words
Sample:
A heart valve with an annular valve body defining an orifice and having a plurality of struts forming a pair of cages on opposite sides of the orifice. A spherical closure members is captively held within the cages and moved by blood flow between open and closed positions in check valve fashion. A slight leak or backflow is provided in the closed position by making the orifice slightly larger than the closure member. Blood flow is maximized in the open position of the valve by providing a convex profile in the orifice-defining surfaces of the body. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within the heart.
Description (a) title of the invention (b) the technical field (c) the background art that is known (d) a description of the invention in sufficient detail to
explain the technical problem and its solution (e) a description of the figures in the drawings (f) at least one mode for carrying out the invention (g) a sequence listing
Ownership and Registration
Inventor as first owner Exception: employer as owner if invention made in
the normal course of employment A transfer can be made at any time beginning at the
date of invention, and until the patent expires (term) Rights may be assigned in whole or in part, dividing
the rights by content, territory and time There may be multiple owners of co-existing rights in
a patent/ copyright, but generally not in a trade-mark.
What is it an Industrial Design ?
provides the owner with exclusive right (monopoly) to prevent others from making, using, advertising and selling an article embodying the owner’s design, or a design confusingly similar with the owner’s design
gives owner the exclusive right to use and to exclude others from using
monopoly limited to jurisdiction covered by the grant (a U.S. design registration is not enforceable in Canada)
term of monopoly in Canada is 10 years from the date of registration
granted in Canada on first person to file basis
What Can I Register as an Industrial Design? Industrial Design protection is available for almost
any new and original shape applied to an article protection does not extend to functional aspects of
an article application for registration in Canada must be filed
within one year from first date of public disclosure of the design
Who Owns an Industrial Design?
Typically, employer is the owner of the design author of design may be owner if “good and valuable”
not consideration paid written contract recommended to avoid later disputes
Rights can be assigned or licensed in whole or in part
How Do I Get an Industrial Design?
Process initiated by filing application with Canadian Intellectual Property Office
Must provide complete visual representation of finished article
Effectively no negotiation in Canada Typically 1 to 2 years to obtain registration in Canada
TRADE-MARKS and COPYRIGHT
What is a Trade-mark?
Words, designs, sounds(?), smell (X) Used – goods/ services Purpose- to distinguish
Trade-marks: What Doesn’t Work?
Confusing Descriptive Name/ surname Adopted by a Public Authority
Trade-marks: User as Owner
Use by Applicant Use by Predecessor of applicant Use by Licensee Registration without Use
Trade-marks: The Registration Process Optional Identify Applicant Describe wares and services Identify first use date File/ Advertise/ Register/ Renew: 15
What is Copyright?
Literary (books, software, databases?) Dramatic (plays, ballet, film) Artistic (aesthetic/ functional) Music (with or without melody)
Copyright: What Doesn’t Qualify?
Ideas (vs. expression) Database compilations Features Dictated by Function
Copyright: Creator as Owner
Author (s) Employer Joint Collective
Copyright: The Registration Process
OPTIONAL Identify author/ assignee Identify the work by title Attach the work to assignment Advantages: presumptions
(impact on transfer and damage awards)
