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

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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 TRADE-MARK 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 ANDCONFIDENTIAL 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 ANDCONFIDENTIAL 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 ANDCONFIDENTIAL 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 ANDCONFIDENTIAL 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 ANDCONFIDENTIAL 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

• Faculty (Full-Time)• Contract Academic Employees• Staff• Visiting Researchers• Post Doctoral Fellows• Students

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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.

IP OWNERSHIP AT UNB

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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.

IP OWNERSHIP AT UNB

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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.

IP OWNERSHIP AT UNB

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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.

IP OWNERSHIP AT UNB

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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).

IP OWNERSHIP AT UNB

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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).

IP OWNERSHIP AT UNB

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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.

IP OWNERSHIP AT UNB

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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.

IP OWNERSHIP AT UNB

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• 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.

IP OWNERSHIP AT UNB

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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 non-commercial 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. 3

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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 worldPrior:• patents and applications• journal/conference proceedings• products on the marketcount 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

• 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

• 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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• 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)

PUBLIC DISCLOSURE - EXAMPLES

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• 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

PUBLIC DISCLOSURE - EXAMPLES

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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. 5

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TIMELINESUNB 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

TIMELINES

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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. 5

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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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• 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)

DRAWINGS

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QUESTIONS?

Eugene F. DerényiPartner

Fogler, Rubinoff LLPederenyi@foglers.com

Tel: 613-842-4299

Shane NasonIntellectual Property Manager

Office of Research Services, UNBnasons@unb.ca

Tel: (506) 648-5995