IP OWNERSHIP and MANAGEMENT
Practical Considerations for Protecting and Using Your IP
March 19, 2013
• Eugene F. Derényi
• Partner, Patent and
Trademark Agent
• Fogler, Rubinoff LLP
• Shane Nason
• Intellectual Property
Manager
• Office of Research
Services, UNB
INTELLECTUAL PROPERTY
OVERVIEW
WHAT IS “INTELLECTUAL
PROPERTY”?
• Certain creations of the mind can be considered
“property”, because legal means exist to allow
owners to exclude others from using the
property
• “Intellectual property, simply defined, is any
form of knowledge or expression created with
one's intellect. It includes such things as
inventions; computer software; trade-marks;
literary, artistic, musical or visual works; and
even simple know-how.”
Source: Canadian University Intellectual Property Group
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WHY SHOULD YOU CARE ABOUT
INTELLECTUAL PROPERTY?
• IP issues arise for researchers and employees
• Often a major portion of a company’s assets
consist of registered and unregistered IP
• Identifying and protecting IP adds value to
university or private sector research
• Sword/Shield
• Revenue Generation
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TRADE-MARKS
• Building a Brand or Rebranding
• Reputation
• Simplify
• Bring clarity to your business goals
• Bring customers back to your products or
services
• Official Marks (S. 9) for universities
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TRADE-MARKS
• Most valuable assets
• 70% of a company’s valuable assets can be
ascribed to its intangible assets
• Examples of brand value in 2011
• Coca-Cola - $71 Million
• IBM - $59 Million
(Profit attributable to the brand alone and
nothing else)
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EXPANDING ASPECTS OF
TRADE-MARK PROTECTION
• Louboutin red soled shoe
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EXPANDING ASPECTS OF
TRADE-MARK PROTECTION
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EXPANDING ASPECTS OF TRADEMARK PROTECTION
• SOUND MARKS
• MGM Lion Roar protected
• As of March 2012
• MARLBORO CASE
• No name packaging for tobacco products
• Court still found confusion
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EXPANDING ASPECTS OF
TRADE-MARK PROTECTION
• Blackberry Maker RIM Won Court Case
• BBM for the Blackberry messenger service vs.
BBM for BBM Canada broadcast measurement
services
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PATENTS
• Can protect:
• Apparatus
- e.g. machines, products, hardware
• Methods
- e.g. software, business methods
• Compositions of matter
- e.g. compounds, genes
• Value – Nortel patents 4.5 Billion
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INDUSTRIAL DESIGNS
• What are they – aesthetic protection – overall
impression produced by the products
• Various designs on the IPad product
• Litigation between Apple and Samsung
• The Apple design is dominated by its simplicity.
The article is unadorned and tile shaped. A
drawing from the design is reproduced below:
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INDUSTRIAL DESIGNS
• Crystal Head Vodka
•Simultaneous use of trade-mark and industrial
design protection
•Launch by Dan Aykroyd and his partner in
Canada
•Banned by the LCBO for awhile – too
appealing to underage drinkers
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COPYRIGHT
• Employees vs. Independent contractors
• Moral Rights
• Copyright Act
• Can be waived
• Cannot be assigned
• Independent contractors – you need waiver in
writing
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INTEGRATED CIRCUIT
TOPOGRAPHIES
• 3-D computer chip circuit designs
• Mask works (U.S.)
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TRADE SECRETS AND
CONFIDENTIAL INFORMATION
• Trade Secrets
• Provide owner with business/competitive
advantage
• Fundamental conflict with patenting
• Patent – disclosure of the invention, rather than
keeping it secret
• Patent has a limited life – trade secret has no
fixed term
• Trade secret – can be confidential forever
• A third party may reverse engineer it or may
discover the trade secret and use it itself
(event patent it)
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TRADE SECRETS AND
CONFIDENTIAL INFORMATION
• Trade Secrets (cont’d)
• Not all inventions are patentable, i.e. novel,
inventive, have utility and the right subject
matter – use trade secret protection
• Patenting is expensive but have substantial
value as assets of the company
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TRADE SECRETS AND
CONFIDENTIAL INFORMATION
• Confidential Information
• Employer confidential information – employee’s
age may be important
• 68% of 18 to 34 year olds – acceptable to
remove confidential information from their
place of employment
• 86% of those 55 year olds and over believe
someone should be fired for taking confidential
information
• Only 74% of those younger than 55 think the
same
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TRADE SECRETS AND
CONFIDENTIAL INFORMATION
• Confidential Information (cont’d)
• 40% of adults believe it is never acceptable to
take confidential company information outside
the office
• But others think it is acceptable to do so under
certain circumstances
• Challenges to employers in protecting
confidential information, particularly where
younger generations have grown up in a
culture where data is freely available and
readily exchanged.
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TRADE SECRETS AND
CONFIDENTIAL INFORMATION
• Trade Secrets/Confidential Information – To Do
• Company/University training
• Company/University policies
• Employee/University agreements
• Monitor your employees’ use of information
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INTELLECTUAL PROPERTY (IP)
OWNERSHIP AT UNB
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Faculty (Full-Time)
Contract Academic Employees
Staff
Visiting Researchers
Post Doctoral Fellows
Students
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IP OWNERSHIP AT UNB
Full-Time: Faculty, Instructors, Librarians
• AUNBT Collective Agreement (2009 – 13); Articles 38, 39.
• Employee owns copyright - traditional works of authorship.
• IP developed using normal University resources (salary,
benefits, office and lab space, library, ordinary computer
access, routine financial and administrative support) is
owned by Employee (i.e., Inventor-owned).
• Exceptions: administrative documents/correspondence;
computer software for internal administrative use.
• Decision to commercialize IP (or not) is with the Inventor;
University has the right to negotiate an agreement to own
and manage the IP.
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IP OWNERSHIP AT UNB
Full-Time: Faculty, Instructors, Librarians
• Inventor must disclose to University if intention is to patent
or commercialize IP themselves, within 1 month prior to
filing patent or IP sale.
• Must identify in writing:
- whether discovery made with normal or above normal
resources (describe circumstances, resources used)
- that he/she is owner of the IP
- financial or other relationships with third parties that
might affect rights
• There is a process for confirming use of resources.
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IP OWNERSHIP AT UNB
Full-Time: Faculty, Instructors, Librarians
• IP developed using above normal University resources is
Inventor-owned, unless an agreement is negotiated with
University to transfer or share ownership.
• Above normal resources include funding targeted to
development of IP (development stipends, extensive use of
technician time, etc.).
• Inventor recognizes that request for above normal resources
may be considered decision to commercialize.
• Inventor and University shall enter into IP Agreement
specifying share of net proceeds based on relative
contribution.
• Process for confirming use of resources.
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IP OWNERSHIP AT UNB
Contract Academic Employees (Part-Time)
• AUNBT Collective Agreement (May 1, 2010 – April 30,
2013); Article 29.
• Ownership of IP created for scholarly work rests with
Employee who creates it, whether IP was created in the
course of employment or using University facilities and
resources.
• Exceptions for administrative documents/correspondence;
work related to day-to-day management, modification of
provided materials (e.g. lab manuals).
• University has the right to negotiate an agreement to own
and manage the IP.
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IP OWNERSHIP AT UNB
Staff
• IP ownership covered under terms of employment contract.
• If silent, is a case-by-case basis depending on circumstances
of employment (what hired to do, resources used, etc.) for
invention rights.
• Copyright typically institution-owned if made in course of
employment.
Visiting Researchers
• IP ownership outlined in position offer (letter) from UNB.
• Typically, IP created by visiting researcher is owned by UNB;
raises obligation to assign (to be confirmed by actual
assignment).
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IP OWNERSHIP AT UNB
Post-Doctoral Fellows (PDF):
• IP terms contained in offer of appointment from VP
Research.
• Unless otherwise agreed in writing between PDF and
UNB, PDF typically retains ownership of IP.
• Exceptions in instances where PDF is working under a
University research contract or sponsored agreement.
• In cases where PDF retains ownership, University
retains non-exclusive, royalty-free right to use such IP
for internal purposes (education and research).
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IP OWNERSHIP AT UNB
Students
• Students hold copyright in thesis/reports; ownership of
ideas themselves normally shared among those who have
made material contribution.
• If have employment relationship with University, IP may be
institution-owned (depends on circumstances).
• UNB may also request, when they work on sponsored
research projects, that students assign IP to the institution.
• If employed on contract involving external client, IP
ownership may be covered under terms of related
agreement (i.e., IP could be client-owned).
• Student should be informed up front by faculty/supervisor.
• Otherwise, IP is Inventor-owned by student.
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IP OWNERSHIP AT UNB
Students (exception):
• Graduate Student Workers who fall under PSAC-UGSW
Collective Agreement, Article 22.
• Retain ownership and copyright of any lectures and course
materials created.
• Except where precluded by terms of funding agreement,
creative contribution to research project (invention) is
shared between graduate student and faculty/supervisor.
• Proportion of ownership decided up front based on planned
contribution; revised as things progress (in writing).
• University has right to negotiate agreement to own and
manage the IP; if not, retains a non-exclusive, royalty-free
license to use IP for internal purposes.
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IP OWNERSHIP AT UNB
• Inventors (faculty, staff, students) can decide to assign
right, title, and interest in IP to University, in return for IP
protection, commercialization assistance, and share of
proceeds (typical process).
• Number of policies, guidelines, and scenarios – can be
quite complex.
• Important: investigate, discuss, and decide on IP
ownership up front, in the early stages of a project.
Consult with ORS. Easier to manage expectations and
document early on, rather than try to fix disagreements
or problems later.
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EXAMPLES: IP ASSIGNMENT
REQUESTED/REQUIRED
Precluded by terms of funding arrangement:
• NSERC Engage Projects
• NSERC Idea to Innovation (I2I) Projects
• Springboard Atlantic Funding
• ACOA Atlantic Innovation Fund
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NSERC ENGAGE
• Supports projects undertaken by University researchers
and new private sector partners (up to $25K)
• Aimed at solving company-specific problem
• IP developed under the project owned by the company.
• IP ownership by company is not automatic in other
collaborative research agreements.
• Must follow NSERC Policy on Intellectual Property:
- use results in Canada
- publication of research results
- student graduation not impeded by IP issues
- University/researcher retains right to use IP for noncommercial purposes
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NSERC I2I
• Grants to accelerate development of promising inventions
from University
• Options: Market Assessment, Reduction-to-Practice,
Technology Enhancement
• Discoveries to be disclosed and assigned to University;
proposal must be endorsed by University ILO (ORS).
• IP must be protected, or protection applied for (e.g.,
provisional patent, trademark, trade secrets) to be
eligible.
• University must justify technology transfer expenses and
commit itself to bear 1/2 of their costs.
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SPRINGBOARD ATLANTIC
• Innovation Mobilization (IM) Program – help industry
engage with researchers and commercialize
opportunities.
• Funds for Industry Engagement ($15,000), Proof of
Concept ($20,000), Patent & Legal ($15,000), and
Marketing Support ($25,000; $15,000 for prototypes) -$50K max/tech.
• Springboard covers 66.73%; University 33.27%.
• Applications co-written and submitted by ILO (ORS).
• Intellectual property must be assigned to the University.
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ACOA AIF
• Funds helping Atlantic Canadians compete … through the
development and commercialization of new ideas,
technologies, products and services.
• Instances where applications are University-led (UNB is
“Proponent”)
• Intellectual Property terms:
- Ensure that the Proponent and Collaborator(s) own any
Background IP or hold sufficient rights in same to permit the
Project to be carried out and Foreground IP to be exploited.
- That the title to Foreground IP is to be vested and, unless
otherwise agreed to in writing by ACOA, to remain exclusively
with the Proponent.
- Take appropriate steps to protect the Foreground IP it owns.
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IP OWNERSHIP: COLLABORATIVE
PROJECTS
While case-by-case basis, standard is:
• Background IP - IP existing before collaborative project:
- Owned by party bringing the IP to project
- Made available to carry out new project
• Foreground IP - IP developed under new project:
- Owned by party creating it (or by institution/company policy)
- Joint ownership for joint development
- Non-exclusive license(s) to internal use for all project parties
• Licensing of IP – commercial use of University portion of IP:
- Option to license IP upon successful completion of Project;
details (e.g., royalty rate) negotiated after IP better defined.
- University retains right to use IP for internal purposes
(research and education).
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PATENTING – AN OVERVIEW
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WHAT IS THE TEST FOR
PATENTABILITY?
• Useful
- Invention must work
• Non-Obvious
- An objective test using “person skilled in the art”
• Novel
- Watch out for public disclosure and prior art
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IT MUST BE NOVEL (NEW)
• Your invention must be distinguishable from any
technology previously publicly disclosed anywhere
in the world
Prior:
• patents and applications
• journal/conference proceedings
• products on the market
count against you, even if your own
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PATENT APPLICATION PROCESS
• Search the prior art (optional, but avoid at your
peril)
• Freedom to operate review (optional)
• Draft an enabling disclosure (application
description)
• Submit application to patent office
• Wait for examination
• Respond to examiner
• Allowance and issuance
• Payment of maintenance fees
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TYPES OF APPLICATIONS
• Provisional
• Non-provisional
• Patent Cooperation Treaty (PCT)
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ANATOMY OF A PATENT
APPLICATION
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Field
Background
Summary
Brief Description of Drawings
Detailed Description of the Embodiments
Drawings
Claims
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PATENT APPLICATION TIMELINE
http://blog.patents-tms.com
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ACCELERATED EXAMINATION
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Patent Prosecution Highway (PPH)
Green Technology Patents
Special Order (Canada)
Track I (U.S.)
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ACCELERATED EXAMINATION
• Expanding PPH Network
http://www.jpo.go.jp/ppph-portal/index.htm
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WHAT’S NEW?
• America Invents Act (AIA)
• Historic shift to first to file – March 16, 2013
• New CIPO Examination Guidelines
• Computer implemented inventions after
Amazon.com
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PATENT BEST PRACTICE/TIPS
• Process-Related Items
- Public Disclosure
- Inventorship
- Timelines
• Application-Related Items
- “Quick and Dirty” Provisionals
- Specification and Claims
- Drawings
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PUBLIC DISCLOSURE
• Public disclosure prior to patenting can
present a bar to patenting in most countries.
• Some countries (including US and Canada)
have a one-year grace period.
• Must be an enabling disclosure - one of
ordinary skill in the art could combine the
publication's description with own knowledge
to make the claimed invention.
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PUBLIC DISCLOSURE EXAMPLES
• disclosing invention to individual, company, or
another institution without an NDA in place.
• presenting or displaying the invention at a
conference, workshop, poster session, seminar,
lecture, or trade show open to the public.
• publishing the invention in a paper, manuscript,
book, pamphlet, etc.
• submitting an abstract or paper to a journal for
publication (depending on journal’s confidentiality
policy).
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PUBLIC DISCLOSURE EXAMPLES
• posting a description of the invention on a Web site
• describing the invention in a news article or feature
report
• leaving an invention in plain sight in a lab or office
that is accessible by the public
• demonstrating a prototype in a public forum
• offering the invention for sale, or selling the
invention (United States)
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PUBLIC DISCLOSURE EXAMPLES
• distributing a thesis to an external reviewer without
an expectation of confidentiality
• making a thesis available for public viewing before
a defense (e.g.; department office)
• defending a thesis; publishing thesis in the library
• orally presenting an invention
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NOT A PUBLIC DISCLOSURE
• researcher submitting Invention Disclosure to
Research Services
• submitting invention to patent agent or attorney
• signed agreement confirming expectation of
confidentiality
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PUBLIC DISCLOSURE - TIPS
• Put NDA in place prior to external discussions.
• Consult with Research Services before any public
disclosure is made.
• After patent protection established, are free to
publish and discuss (but not beyond what covered)
• Grant applications should be marked “Confidential”
(each page) – header or footer, watermark, etc.
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INVENTORSHIP
• Determined by patent laws of each country.
• Patents can be invalidated if application fails to
name an inventor, or adds someone who is not a
true inventor (i.e., not for recognition sake).
• Inventor - person who first independently thought
of the invention and objectively manifested idea.
• Inventorship based on claims of issued patent.
• Inventorship can be corrected (add or delete
names), as long as the error arose without any
deceptive intention.
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INVENTOR VS. CONTRIBUTOR
Contributor who may not be an inventor:
• does fully directed work to help reduce an
invention to practice (tests, experiments, lab
work, assistance)
• supervises the work being done, but does not
contribute directly to the claimed invention
• suggests an idea or result without providing
the means of reaching that result
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TIMELINES
Don’t expect quick turnaround on a patent:
• US Provisional is placeholder that establishes
priority date; examination does not start until
Non-Provisional application (1 year)
• Examination: in US, current average is 2
years before application is picked up by
examiner the first time for review
• Option with new rules in US: Accelerated
Examination; can submit RFE in Canada.
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TIMELINES
TIMELINES
UNB experience (46 issued patents to January
2013):
• Avg. time to issuance (from Non-Provisional
application): 3 years, 7 months
• Shortest time to issuance: 1 year, 8 months
• Longest time to issuance: 7 years, 3 months
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AVOID “QUICK-AND-DIRTY”
PROVISIONALS
• Only in instances where disclosure is
imminent and cannot be avoided.
• Must be comprehensive enough to support
eventual claims in Non-Provisional.
• Issues: poor language, not comprehensive,
doesn’t support eventual claims
• Tip : spend more time/resources at
Provisional stage to reduce effort and cost at
Non-Provisional stage.
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SPECIFICATION AND CLAIMS
• Work closely with patent agent to draft the
specification (disclosure and claims); claims
language key
• First claim is broadest to attempt to get most
coverage
• Tip: try to think of ways others might try to
work around your claims, to help agent word
claims to protect against this.
• Tip: be aware of excess claims fees in the US
and Europe
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DRAWINGS
• If drawings are incomplete or do not follow
guidelines, receive Notice of Incomplete Reply
• Failing to respond can result in abandonment
• Tip: Black and white drawings normally
required in USPTO (cannot use colours to
distinguish items)
• Tip: Photographs can be very hard to
reproduce
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DRAWINGS
• The following will result in rejected drawings:
- portions of figure blurry, missing or improperly
shaded (difficult to electronically reproduce)
- text touching or running over borders or lines
(e.g., flow chart)
- figures that are too small to be properly
reproduced
• Tip: while can change fonts, size, shading, etc.,
drawings must be identical to what originally
filed (e.g. can’t introduce new information)
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QUESTIONS?
Eugene F. Derényi
Partner
Fogler, Rubinoff LLP
ederenyi@foglers.com
Tel: 613-842-4299
Shane Nason
Intellectual Property Manager
Office of Research Services, UNB
nasons@unb.ca
Tel: (506) 648-5995
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