Cardware Conference presentation on BIG DATA June 17-18 2014
13530912_2.PPT
1. WELCOME
Added experience. Added clarity. Added value.
VANCOUVER CALGARY EDMONTON SASKATOON REGINA LONDON KITCHENER-WATERLOO GUELPH TORONTO MARKHAM MONTRÉAL
2. What You Need to Know
About Owning Your
Intellectual Property
Lisa Abe-Oldenburg
Catherine Dennis Brooks
Dr. Karen Durell
March 26, 2015
3. 3
What You Need to Know About Owning
Your Intellectual Property
1. Introduction
2. Copyrights
3. Trade-marks
4. Patents
5. Q&A
4. 4
INTRODUCTION
• “Intellectual Property” or “IP” is a term used to describe
the many types of intangible rights, which can co-exist
in same thing or process
• Statutory rights differ in each country
– In Canada, we have a Copyright Act, Trade-marks Act and a
Patent Act
– Other statutory IP, e.g. Industrial Designs, Integrated Circuit
Topographies, Plant Breeders’ Rights
• Common law rights, e.g. Trade Secrets (created through
duties of confidence or contract)
5. 5
Introduction
• Each type of IP comes with its own bundle of rights
• Anyone who creates, hires someone to create, buys,
sells, distributes, licenses or uses/exercises the IP must
understand who owns it, what specific rights they have
and what they don’t
• Buyer/user risk of infringement claims and serious
damages or increased license fees/royalties if you don’t
have the rights you need up front
• Seller/licensor risk of giving away too much and leaving
money on the table if you don’t clarify the IP rights
6. 6
COMMON COPYRIGHT PROBLEMS
• Scenario 1 – Software license giving “right to use” software – what does
that mean???
• Copyright protects every original literary (includes computer programs and
databases), dramatic, musical and artistic work
• The “right to use” is not a right under the Copyright Act
• Owner’s exclusive statutory rights include:
– Produce
– Reproduce/copy
– Perform
– Publish
– Translate
– Communicate by telecommunication
– Also for computer programs, to rent
7. 7
Common Copyright Problems
• Statutory rights can be further dissected by scope, e.g.
territory, line of business, product, machine/equipment,
online/Internet/electronic vs. hardcopy, number/volume,
term/duration, etc.
• Is it worldwide? Unlimited? Perpetual?
8. 8
Common Copyright Problems
• Scenario 2 – You hired a developer
• Just because you paid for it, doesn’t mean you own it
• No “work for hire” rule in Canada
• Copyrights exist automatically under Copyright Act - works are first
owned by the author/creator (or their employer if created in the
course of employment)
• Subcontractors and freelancers own the work they create unless
they sign a written assignment
• What rights are being assigned/transferred?
• Otherwise might be just an implied license – what is its scope???
9. 9
Common Copyright Problems
• Scenario 3 – Your company is selling or buying IP licenses to/from
a third party and the license agreements don’t prohibit
assignment/transferability
• Is the IP transferable or sublicensable?
• Similarly, what happens if you need to give/receive the IP to/from a
customer, outsourcer or service provider?
• Copyright license grants are personal to the licensee – need express
permission from the licensor to transfer/assign or sublicense. Silence is
not acceptable.
• Can you give proper reps and warranties as to ownership and/or
licensability?
• Have you checked the confidentiality restrictions in the licenses?
10. 10
Common Copyright Problems
• Scenario 4 – You try to change the original work which you do rightfully own
and still get sued by the author
• Violation of author’s “moral rights” – what are those???
• You cannot modify a copyright work unless you have a written waiver of
moral rights from all authors
• Waiver not the same as an assignment
• One waiver may not cover all future owners/assignees and licensees
• Moral rights include:
– Right to integrity of the work (can’t modify it)
– Right to remain anonymous
– Right to be associated with the work by name or under a pseudonym
11. 11
Common Copyright Problems
• Scenario 5 – Your company receives/gives a non-exclusive sole
license to exercise the right to….
• What does that mean???
• Know the difference between exclusive vs. non-exclusive vs.
sole license rights
– “Exclusive” means to the exclusion of all others including the licensor
themselves (creates a monopoly) – licensor can no longer exercise
those rights or license those rights to others
– “Non-exclusive” means the licensor can continue to exercise those
rights and can further sublicense others the same rights (creates
competition)
– “Sole” means the licensor can continue to exercise those rights (some
competition) but cannot further sublicense others the same rights
12. 12
What is a Trade-mark?
• Words MILLER THOMSON
• Slogan ADDED EXPERIENCE.
ADDED CLARITY. ADDED
VALUE.
• Word & Design
• Design
A trademark distinguishes your goods and
services from those of others.
13. 13
Common Trade-mark Problems
Scenario 1 - TESLA trade-mark protected by Tesla Motors, Inc.
in Canada and the United States, but registered in China by an
entrepreneur. $4 million infringement action started by the
entrepreneur when TESLA cars sold in China.
• Trade-mark rights are generally national in scope
• Protection through registration should be obtained in all jurisdictions in
which business is carried on in association with the trade-mark
14. 14
Common Trade-mark Problems
Scenario 2 - Yukon Territory television ad campaign to promote
tourism launched with use of the slogan 'We'll leave a light on
for you'. Motel 6 owns registrations for 'We'll leave the light on
for you'.
• Searches are recommended prior to filing a trade-mark application to
ensure it is available for use and registration in Canada
• Various types of searches:
• Identical hit search
• Full availability search
15. 15
Trade-marks
• Identical hit searches have limitations – reveal only identical / near
identical marks
• Full availability searches obtained from an external provider
(Thomson CompuMarK) – comprehensive information including
confusingly similar marks, business name registrations, domain
names, internet search results
16. 16
Common Trade-mark Problems
Scenario 3 - Your company has used a trade-mark for many
years. Is it necessary to register it?
• Benefits of Trademark Registration
• Trade-mark rights exist without registration and are protected through the
tort of passing off
• Registration gives the owner of the exclusive right to use the mark
throughout Canada
• Statutory causes of action available to registrant
• Public notice of rights may deter infringers
• Practical advantage in litigation
17. 17
Trademarks
Prosecution of Trade-mark Application
• A trade-mark is registrable if it is not:
• A word that is primarily the name or surname of an individual
who is living or has died within the preceding 30 years
• Clearly descriptive of deceptively misdescriptive of the character
of quality of the wares or services in association with which it is
used or proposed to be used
• Confusingly similar to a registered or applied for trade-mark
18. 18
Trade-marks
Prosecution of a Trade-mark Application
• Filing
• Examination
• Approval or Examiner’s Report
• Advertisement in Trade-marks Journal
• Allowance
• Registration
19. 19
Trade-marks
Prosecution of a Trade-mark Application
• One or two years from filing to registration
• $1500 to $2000 if no complicated Examiner’s reports
and no opposition proceedings
• Registration is valid for 15 years and can be renewed
upon payment of renewal fee
20. 20
Common Trade-mark Problems
Scenario 4 - Your company stops using a trade-mark it
registered and starts using a different mark. Can its rights in
the registered mark be lost?
• Section 45 Proceedings
• Can be initiated 3 years after registration
• Must show use of the mark as registered within the three
years prior to the date of the section 45 notice
22. 22
Patents
First Owner: Inventor
Right: exclusive right, privilege and
liberty of making, constructing and
using the invention and selling it to
others to be used
National
Filing Required
20 years from filing date
Criteria: Protection for an invention that
is novel, non-obvious, has utility and is
patentable subject matter
23. 23
Common Patent Problems
• Scenario 1: I went to a conference / trade
show and presented my invention.
– Public Disclosure
• Rules can Differ by Country
– Absolute Novelty
– 12 month Disclosure Grace Period
24. 24
Common Patent Problems
• Scenario 2: A required due date for my
patent was missed.
– Examples of Required Due Dates:
• Maintenance Fee
• Request for Examination
• Response to Office Action
– Deemed Abandoned
• 12 months
• Reinstatement
25. 25
Common Patent Problems
• Scenario 3: A competitor is racing to the
marketplace and may have filed a patent
application.
– First-to-file System
– 18 month Application Secrecy
• Plant Derived Vaccine Applications
– Rugers (N. Tumer, etc., Mar. 5, 2012)
– H. Daniell (Sept. 11, 2012)
– U of Central Florida (H. Daniell, Dec. 17, 2012)
– Sound Prediction
26. 26
Common Patent Problems
• Scenario 4: The patents were filed in the name
of the inventors, but they should be owned by
the company.
– First Owner = Inventor(s)
• Chain of Title
– Contracts/IP Policies
» Employees?
» Students?
– Beneficiary or Estate of inventor?
– Assign Patents
• File Assignments with the Patent Office
– Witness / Proof of Execution by Assignor
e.g., Vaccine
Applications:
App #1. Owner: H.
Daniell
App #2. Owner: U of
Central Florida &
Inventor: H. Daniell