Intellectual Property, Contract and Commercialization for Graduate Students and Postdoctoral Fellows. Presenters: D. Scott Lamb Associate Counsel, Richards Buell Sutton Sze-Mei Yeung Partner, Richards Buell Sutton Greg Sasges In-House Legal Counsel, Office of Research Services, SFU Ian Hand Managing Director, SFU Innovation Office & Executive Director Venture Labs®

2 Objectives Recognize the strategic value and benefits of intellectual property (IP) Understand the various forms of IP Learn how to protect and use your IP Discover a wealth of IP resources

3 IP is a valuable business asset IP information and protection may help you avoid costly mistakes IP gives you an edge over the competition IP can be sold, licensed or traded IP: what’s in it for you?

4 Benefits of IP information Identify trends First look at the competition Identify key contacts Find solutions to problems Avoid duplication of effort Prevent infringement

5 Trade secrets Patents Trade-marks Copyrights Industrial designs Common forms of IP

6 What is a “trade secret”? Any confidential information used in a business that provides a competitive edge and can be kept secret The confidential information can be: specific product information business information

7 Trade secret protection Trade secrets are protected by confidentiality and licence agreements Protection lasts forever, as long as confidentiality is maintained If the trade secret is disclosed, protection is lost

8 The “deal” of the patent The owner provides a full public disclosure of the invention The Canadian government provides a grant of exclusive rights in Canada to the owner for 20 years from the date of filing

9 What is patentable? Product Composition Machine Process … or its improvement The invention must be new, useful and non-obvious

10 Prior to filing an application: –Keep your invention confidential –Search patent databases and scientific literature –Consult a registered patent agent Patent application: –Draft and file –Request examination –Respond to CIPO’s objections, if any Patenting process

11 What is a trade-mark? Word(s) KODIAK Word and design Design Slogan “ZOOM-ZOOM” Reproduction courtesy of Kodiak Group Inc.; Hasbro, Inc.; Schering-Plough Healthcare Products, Inc. All rights reserved; Mazda Motor Corporation.

12 What is a trade-mark? (continued) Shape  Sound  Certification mark  Reproduction courtesy of (bottle & design) Coca-Cola Ltd.; Metro-Goldwyn-Mayer Studios Inc.; (Woolmark design) The Woolmark Company.

13 Trade-mark protection and registration Registered Not registered Geographic coverage Coverage is regional across Canada Period is 15 years, Period of use is to renewable be proven Present in the Not present in theTrade-mark Register Registration serves as Ownership to be proof of ownershipdemonstrated and defended

14 Use it or lose it Control all use (distributors/retailers/licensees) License use to others Avoid generic use Stop unlicensed use Maintain continuous use

15 What is copyright? It is the exclusive right to produce or reproduce a creation Literary Dramatic Musical Artistic

16 Copyright is automatic upon creation and registration provides a legal advantage –Only form of protection that is world-wide Use proper marking: © owner’s name, year Term is generally life of author plus 50 years Copyright registration and protection

17 What is an industrial design? The visual features of shape, configuration, pattern or ornament, or any combination of those features applied to a manufactured article

18 Industrial design registration and protection Industrial designs must be registered for protection –Keep confidential prior to filing –Search, file with CIPO and await a response Design registration provides a maximum of ten years of protection in Canada

19 Summary of IP forms Protect Application required Term Trade secrets Confidential information N/Aindefinite Patents Inventionsyes Up to 20 years from date of filing Trade-marks Words,logos, slogans, sounds recommended 15 years, renewable Copyrights Writings, music, art, plays, etc. recommended life + 50 years (many exceptions) Industrial designs Visual features yesup to 10 years

20 Summary IP is a valuable business asset and appeals to consumers and investors Using IP system helps avoid costly mistakes IP information is an immense source of business and technology information

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Intellectual Property Ownership and Contractual Issues for Graduate Students and Postdoctoral Fellows September 11, 2014 Presented to Simon Fraser University by Sze-Mei Yeung

Outline Employees versus Contractors Collaborative Research Agreements (“CRA”) Joint Ownership of Intellectual Property (“IP”) Confidentiality & Publication Improvements

Employees versus Contractors – IP created by employees generally owned by employer if created using employer’s resources and as part of employment duties – Independent contractor owns IP – Contracts can amend or supercede these concepts – Need clear language addressing ownership of inventions

Sample Language – You agree that all data, designs, inventions, discoveries, improvements, software, copyright, know-how or other intellectual property, whether or not patentable or copyrightable, created by you at any time during your employment OR during the term of this Contract (the “Works”) are owned by ABC Co. – Without limiting the foregoing, you hereby irrevocably waive all moral rights in the Works and assign and transfer to ABC Co. your entire right, title and interest in such Works.

Research Collaborations Persons (or organizations) with complementary technologies agree to collaborate in a research program to co-develop a single product Pools intellectual capital & financial resources to further research and development of less mature technology, under the terms of a CRA Issues to consider: clear project definition (responsibilities, timelines and budgets), ownership of IP, filing and prosecution of patents, rights to commercialise

Joint Ownership A joint owner cannot license or assign a partial interest in a jointly owned work without consent of other co- owner(s) Complicates licensing and commercialisation of inventions to third parties if there are multiple joint owners Alternatives to assigning rights include choosing not to participate in a project or excluding certain “background or pre-existing technology” from any assignment

Confidentiality & Publication Confidentiality provisions or agreements protect disclosure and/or unauthorised use of confidential information including trade secrets and undisclosed technology Usually needs to be balanced with rights of faculty/students to publish research results

Sample Language You will keep the Confidential Information in confidence and will use the Confidential Information solely for the purposes of performing the services set out in this Contract, and will not without ABC Co's prior written consent, disclose any Confidential Information to any person or entity

Publication Reserve rights to publish research results Provide 30 to 60 days to review proposed publication or disclosure Include period of time after which publication must proceed (e.g. 6 months) Confidentiality provisions should allow disclosure to faculty / students etc. who require confidential information

Improvements An addition or alteration which increases the quality or value of something “Improvements” used in licenses and CRA’s Can be broadly or narrowly defined Broad definition may provide automatic pipeline to future developments

Sample Language Broad Definition: “means improvements, variations, updates, modifications, and enhancements made and/or acquired by either Licensor or Licensee relating to the Technology at any time after the Start Date.” Narrow Definition: “means a patent application or patent covering an improvement to the invention claimed in the Licensed Patent, provided that the improvement: (i) performs a function or functions substantially the same as those described in the claims of the Licensed Patent, (ii) is invented solely by the Principal Investigator while employed at SFU; and (iii) cannot be legally used or practiced without infringing a valid claim of the Licensed Patent.”

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