Slide deck for Meetup 68, June 9, 2015

1. www.siliconhalton.com
linkedin/siliconhalton
@siliconhalton
Meetup #68: IP for IT: What really matters

2. • Welcome
• Thank you’s
• Announcements
• Keynote
– Matthew Graff, Partner
• G2KYM
• Mark Your Calendar
• Networking
Agenda

3. Welcome to HaltonHiVE!
(yes, we’ve changed our name!)
• Co-working space for entrepreneurs, freelancers and start ups
• 80+ members and growing!
• Meeting space and Conference Room
• Community events, networking and perks!
• 24/7 Membership for $99/month
Contact:
www.haltonhive.com
staff@burlingtonhive.com (haven’t changed the e-mail yet!!)

4. Show Of
Hands
• 1188 members
• 2390 Twitter followers
• 67 meetups
• 7 peer2peer groups
• hundreds of LinkedIn discussions

5. Thank You!

6. MAY 27/15: Pitch Yourself Workshop
• 30 students
• 5+ Mentors
• Workshops on pitching & networking
JUNE 3/15: Speed Pitching Session
• 30 Students
• 30 Employers
• 30 Pitches in 60 minutes
TechUnderTwenty.com
Corporate
Sponsors

7. Meetup #67

8. contributorSH
You?

9. Announcements

10. Announcements

11. Keynote

12. Meetup 68
Matthew Graff, Partner
@bereskinparr

13. Bereskin & Parr LLP
13
Silicon Halton
Meetup #68: IP for IT
Matthew Graff

14. 14
Intellectual property
• Basic nature of IP rights
– Rights of exclusion
– Rights granted to the originator (but transferable)
• Policy rationale
– Economic incentive to encourage the creation of intangible
goods
– Protection – consumers, authors, inventors
– Entitlement – idea that a person who creates intangible goods is
entitled to control the results of their work and profit from it

15. 15
Types of IP
• Technology-related IP
– Patents
– Industrial Designs
– Trade Secrets
• Branding-related IP
– Trademarks
– Domain names
• Works of Composition IP
– Copyright

16. 16
Trademarks
• Word mark
MICROSOFT
• Design mark
• Word/design mark

17. 17
Trademarks
• What is this?

18. 18
Trademarks
• A mark that distinguishes the goods or services of one trader from
the goods or services of other traders
• Can be a word, symbol, design, or a combination of elements
• Pick a ‘clean’ mark
• Registration optional, but provides advantages
• Big changes on the horizon for Canada
– File applications now

19. 19
Copyright
• Protects fixed expression of an original work
– No protection of mere ideas
• Stop others from reproducing the work or a substantial part thereof
• Can provide protection for:
– software
– database structure (selection and arrangement of data)
– website structure, layout and content
– user guides / instructions
– print and video advertising, jingles, theme music
• In most countries, right arises automatically upon creation of the
work
• Term is life + 50 years (generally)

20. 20
Industrial designs
• Industrial designs (Canada) versus design patents (U.S.)
• Features of shape, configuration, pattern or ornamentation in a
finished article, that appeal to and are judged solely by the eye
• Dog coats and computer icons, GUI arrangements
• Apple v. Samsung

21. 21
Patents
• Protects new, inventive and useful products and technologies
• Limited time monopoly in exchange for public disclosure
• Powerful rights that cannot be defeated by ignorance of patent or
independent invention
• Patents are national rights, and in most countries the application is
examined

22. 22
A patent is not…
• A right to make the thing patented
– Patents confer “negative rights”, meaning patent owners are still
subject to the rights of owners of existing patents
– If you obtain a patent for an improvement on an existing
invention, you must obtain a license to use the existing invention
• Invulnerable
– Patents are always open to challenges of invalidity
• Fully effective without enforcement
– Patent holder must be willing to pay costs of enforcing patents

23. 23
Patent advantages
• Offensive
– Stop others from using your inventions
– Licensing
• Defensive
– Cross-licensing
• Marketing
– Patent as an asset
– Business optics
– Investor confidence
– Consumer confidence

24. 24
Patent realities
• Costs
• Time commitment
• Delay
• Must have an invention
• Enforcement
• Validity challenges
• Issues with software patents

25. 25
What?
• Selecting inventions to patent
– Is it core technology?
– Popularity/competitive advantage of technology
– Lifecycle of technology
– Barriers to entry for competitors
– Ability to detect infringement
• Commercial versus technical considerations
– Patentability requirements
• Improvements

26. 26
When?
• Where do I want protection?
– 1 year grace period in Canada, U.S. and very limited number of
other countries
• Europe/Asia
– Requires inventions to have never been disclosed before filing
– “Absolute novelty”

27. 27
Where?
• U.S. and Canada
• Places where you or your competitors do business
• Offshore manufacturing
• Must be practical
– Filing broadly is costly
– International application (PCT) if 3 or more countries

28. 28
Software patents
• Subject matter eligibility
– law of nature, natural phenomenon, abstract ideas
• What is and isn’t “abstract”?
– performance of business practice known from the pre-Internet
world along with the requirement to perform it on the Internet
(Bilski; Alice)
– process for data compression
• Despite uncertainty, big software companies are amassing large
patent portfolios

29. 29
Living with other’s patents
• Manage risk of infringement for new products
• Patent litigation is extremely costly
• “Freedom to operate”
• Exhaustive searching is not feasible
• 18 month secrecy window
• Deal with problems as they arise

30. 30
Ownership
• Incorporate
• Get it in writing before the IP is created
– Consultancy arrangements
• Joint development of improvements
• Exclusivity, residual knowledge
– Employment
• Ownership transferred by paper assignment or employee
contract
• Require all employees to enter into IP ownership and confidentiality
agreements
– Agreements signed as a condition of employment on initial hiring
– Ensure that engineers and researchers keep careful records of their
work

31. Bereskin & Parr LLP
Matthew Graff | Partner
905-817-6107
mgraff@bereskinparr.com
Thank you

32. Jeff Bulzak
Marketing Automation & Customer
Acquisition Consultant, Geek, Entrepreneur,
Giver, & Start-up Supporter
@BZKGroup

33. Derek Lee
2275 Upper Middle Road East – Suite 101
Oakville, Ontario L6H 0C3
mediarezstudio.com

36. Mark Your Calendars

37. Meetup 69

38. Open Floor