1. My name is Andrew Kendall - I am the StFX Industry Liaison Officer.
I like giving out the conclusions of my talk at the outset – that way you can decide if the talk itself is worth sticking around for.
Then I’ll tell you about what I’m going to talk about.
So this, is all I really want you to get out of this: I want you to learn that:
You have likely Intellectual Property – have you written a research paper, a these? Have you worked for a professor?
Then – you have produced Intellectual Property
It May have Commercial Value…..
If you realize what your Intellectual Property is - It could make a career for you – you could get rich!
But if your IP has commercial value - You must keep that IP CONFIDENTIAL
That IP should be legally protected
I can show you how – I can help
Intellectual Property Case Study Why IP Should Matter to You CREATE training program in Climate Science (TPCS) StFX Industry Liaison Office Andrew Kendall

2. CIPO Case Study Who I am (and what I do) University Inventions
Intellectual Property (and why it really matters)
Case Study
University Inventions
Industry Liaison Office
Technology Transfer
Intellectual Property
Patenting
IP Policy

3. University Inventions
A few quick hits on university inventions –
Gatorade, from the University of Florida
The Nicotine Patch, University of California,
Magnetic Resonance Imaging, Oxford University,
And of course, GOOGLE, from Stanford.

4. Canadian University Inventions
A few quick hits on university inventions –
University of Toronto,
The G-suit in 1941
Hi – resolution electron,microscope, 1938
Pablum
Insulin
McGill
Transparent polymerized methyl methacrylate, - Plexiglass, by a chemistry grad student, 1931

5. What is intellectual property?
any form of knowledge or expression created with one's intellect.
Inventions
Literary
artistic
musical
visual works
computer software
Trademarks
"know-how"
Not just Einstein comes up with Intellectual Property
– IP is any form of knowledge or expression created
with one's intellect. These include , inventions , literary, artistic
musical , visual works, computer software, trademarks
"know-how"
In order for a company to make a business decision to invest potentially millions of dollars in developing a product to market, the company needs to know that its competitors cannot bring out the same product for less investment.
Hence protecting and licensing IP to industry provides industry with the confidence and protected position to make developmental investment decisions.
It is possible that if the IP is freely available to all, hence no one company has a preferred position, that no company will make the investment decision needed to bring the product to the market place.

6. Patents A patent is a “contract” between the inventor
and the Government
(Patent Office)

7. Patents
A patent allows the inventor(s) to have a monopoly in manufacturing and selling the invention from the date the patent is granted to a maximum of 20 years from the day on which the patent application was filed.
A patent allows the inventor(s) to have a monopoly in manufacturing and selling the invention from the date the patent is granted to a maximum of 20 years from the day on which the patent application was filed.

8. Patents
Consideration for the contract:
Inventor agrees to disclose fully the invention to the public – “fully” is the operative word
Consideration for the contract:
Inventor agrees to disclose fully the invention to the public – “fully” is the operative word

9. Patents
In exchange, the Government grants for a “limited time” a “limited monopoly” on the invention to the inventor if certain “patentability tests” are met
What is the “limited time” or life of a patent?
20 years from the filing date of a utility application (no rights during pendency)
Why a “limited monopoly?”
Limited to the claimed invention
An inventor does not have a guarantee that he can make, use or sell the patented invention. A third party’s dominating patent may exist.
Patents grant their owner the right to “exclude others” from:
Making the invention
Using the invention
Selling the invention
Offering the invention for sale
Importing the invention

10. Prerequisites for a Patent
So what does my idea need to be protected by a patent?
It Must have a USE:
An invention must have some use. That is, it must have utility, be of some commercial or industrial value and be of some benefit to the public. The invention must also be practically fit for the purpose described in the invention and it must do what the inventor promised it would do. When patent claims are based on results that fail, a patent will not issue.
Must be Novel
An invention must be new and novel, that is, never previously disclosed to the public. An invention is called “anticipated” if it has been previously disclosed in the prior art. The invention must be different than all other devices, considered individually, in the art to which the invention applies. This is a relatively objective test hence easier to apply than the obviousness test.
Inventive Step
An invention must be inventive. That is, it must be a step forward in the art of the field of the invention. An invention that lacks inventiveness is considered to be obvious and not patentable. An invention is inventive if it would not be obvious to a person “skilled in the art” of the field of the invention in view of all the available prior art at the time of the filing of the patent application. The prior art may be “mosaiced” together. This means several patents may be considered in any reasonable combination to determine if the invention would be obvious to a person skilled in the art. Mere workshop improvements to an existing invention are not considered to be inventive. The lack of inventiveness is fatal to patentability. This is a subjective test and a difficult one to satisfy during a patent examination.
Utility
Novelty
Inventive Step

11. What Can be Patented (from CIPO Web Site)
Yes
New kind of lock
Apparatus for building door locks
Process for lubricating door locks
Method of making door locks
Improvements of any of the above No
E = MC2
Romeo and Juliet
A business plan

12. Apple, Others, Hit with Remote App Activation Patent Infringement Suit
Barracuda Fights Trend Micro Patent Infringement Allegations By Stefanie Hoffman, 8:04 PM EST Tue. Jan. 29, 2008
In the face of a pending investigation by the U.S. International Trade Commission, Barracuda Networks publicly announced it plans to defend itself against Trend Micro's accusations of patent infringement, claiming that the case attacks the open source community.
Apple, Others, Hit with Remote App Activation Patent Infringement Suit
December 15th, 2009 at 9:00 AM - News by Jeff Gamet Apple, Adobe, Microsoft and several other companies were hit with a patent infringement suit on Monday by BetaNet for violating a patent it owns. The case alleges the companies are violating a patent that describes a process for securely activating software remotely, according to The Loop.
EOLAS SUES MICROSOFT FOR INFRINGEMENT OF PATENT FOR FUNDAMENTAL WEB BROWSER TECHNOLOGY THAT MAKES "PLUG-INS" AND "APPLETS" POSSIBLE Chicago, IL, (February, 2, 1999)
BlackBerry maker, NTP ink $612 million settlement
Research in Motion averts shutdown of wireless service, announces fourth-quarter warning.
March 3, 2006: 7:29 PM EST
- BlackBerry maker Research in Motion said Friday it agreed to pay $612.5 million to patent holding company NTP to settle a long-running dispute that had threatened to shut down the popular wireless service for its 3 million users.

13. Samantha Chang Case Study
Is Samantha an employee?
If so, of who – the University? (she is probably some sort of employee of the university if that is where the cheques come from.
Is there a union that should be involved?
What is the invention? (The use of non-infrared narrow band light and imaging)
What constitutes an inventor? (Point out that there is no definition of an inventor in the Patent Act and that inventing requires conception and sound prediction of success). Was anyone else in the lab a co-inventor?
Who will own the patent rights? (Is there an institutional policy? Would a contract prevail? What if Samantha doesn’t agree to a contract?
What are the relevant facts in the case?

14. Samantha Chang Case Study
What are the general issues that need to be decided?
Who owns Samantha’s work?
(0n the issue of minor status, consider how many minors have jobs – e.g. with companies like McDonalds. Do we get anyone to counter-sign for them?)
Under patent law, the inventor is the first owner.
Did Samantha do anything to arguably transfer away her rights? If she is an employee, did she transfer her rights by way of a policy?
What is needed for the policy to be binding?
(It would need to be reasonably known to the person being bound or reasonably known to them – in this case, it is referenced it eh University catalog that a student is bond by al policies and the catalog is available o the University website, so it would likely be binding.)
What rights will AutoPartsCo. get? Ownership or license? (Explain what a license provides and how it gives up most of the ownership rights in return for royalties. In this case, it says they will get a royalty-free license. It does not say anything about whether it is non-exclusive.)
If a patent assignment is not signed, what is likely to happen?
(AutoPartsCo may sue. A patent can still probably be filed in eth Universities name. Patent assignment probably does not affect who as the rights to ownership in any event.)

15. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
Look to definition of an “invention” in the Patent Act (chich includes “any new and useful improvement to…”)
Understand that an improvement can be patented; In other words, one person can own the original invention and someone else can own the improvement
Fact – Over 90% of patents are for improvements over existing patented inventions
The person who owns the improvement can really only practically use their improvement after the original patent expires or if they buy the original device legitimately and then improve it
Another approach – there are many inventions that combine other inventions;
Note that an improvement cannot only just be a “workshop improvement” but needs to rise to the test of a true invention:
NOVEL – must be new, first in the world
USEFUL: must be functional and operative
INVENTIVE: must show ingenuity and must not be obvious to someone of average skill in the field of the invention

16. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
It is more useful to initially ask what the documents are about.
The case suggests that they are documents to ensure that the invention gets transferred to PTU (the University).
Does Samantha have any obligation to sign anything for PTU?
Does she have a written agreement with PTU? (No).
Does PTU’s policy on IP apply to her? (The policy says “any invention made by a graduate student or full-time employee of PTU would be owned by PTU”. The Answer is: probably not. What does the law say?
There is no provision in the Patent Act relating to patent ownership.
The case decisions have established that if an employee was hired to invent then eth employer is the likely owner. Does such a rule apply here (First p is Samantha an employee? If I asked the Human Resources Department of PTU they would likely say no. If I asked Professor Milbourne he might say yes. Overall the points that have to be looked at would be duties, control, etc. However, on turning to a consideration of whether or not Samantha’s job included her inventing things, the answer is likely no.

17. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
Samantha probably owns her invention without signing.
An important point to consider is whether or not she is a sole inventor if there are others who could be considered to be joint inventors.
The Canadian test for inventorship is that an inventor has to both conceive of the invention and have a sound prediction that the invention as conceived would work.
Is there anything else in the case who might be a joint inventor? If not, Samantha might be the sole inventor and, therefore, the sole owner.
As sole owner, she would be in a position to solely determine its disposition.

18. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
Obviously, if she does sign, PTU owns the invention; if she doesn’t sign, she continues to own it.
As to the questions of who should own it, this is really that can stimulate classroom discussion.
As to “having rights:” to the invention, there is nothing that supports any rights other than ownership in the case. Make sure that the interests of AutoPartsCo are raised in the discussion because, at the very least, they will be interested in being able to use the invention.

19. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
The simplest answer is that PTU’s policy seems to be silent on this point as it only deals with graduate students. if the participants are, in fact, undergraduate students, the discussion leader can ask them directly what their views are; would they expect to own their own inventions or not?

20. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
> Discuss the novelty rules of patents.
Novelty means that the inventor and anyone obtaining information from the inventor cannot have made a publication of the invention to someone who does not have an obligation of confidentiality with the inventor.
Based upon this definition, Samantha’s disclosure to her mother is probably not a public disclosure. But what if the mother tells others (e.g. bragging to others at the faculty club about what the daughter has done) and provides enough details of the invention to allow for its replication? In this case, there might be novelty problem.
Another issue that might be referenced in discussing the issues around novelty involves the grace period that occur in Canada and other countries. The weakness of the inconsistency among countries can also be discussed as an explanation as to why many IP professional s avoid relying on grace periods

21. Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using existing technology?
2. Should Samantha sign the documents? If she does will they be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had made the discovery, would he/she have the same issues as Samantha?
6. What impact does Samantha telling her mother about being named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest she consider?
This is really an open item to stimulate discussion
AutoPartsCo will certainly be upset if that can’t access the use of the patent
Additionally, if Samantha upsets PTU or Milbourne, it might have a detrimental impact on her future career.