1. Intellectual Property Primer University of Guelph April 15, 2015

2. Agenda IP overview Patents Costs

3. Intellectual Property Rights Patents Confidential Information & Trade Secrets Industrial Designs / Design Patents Trademarks Copyright

4. Intellectual Property Rights IP rights are limiting or negative rights – The right to stop others from using your IP – Not the right to do anything

5. The Technology Life Cycle Different inventions proceed in parallel – Continuous development of improvements and new innovations to improve commercial products “Genius is 1% inspiration and 99% perspiration.” Thomas Edison, 1903 Innovation Brand Development Commercialization Research & Development Exit Marketing

6. Confidential Information / Trade Secrets Confidential Information – Any information that is treated as confidential and proprietary can be protected Customer lists, business plans, technical information, “know- how”, unpatentable inventions Trade Secrets Innovation Brand Development Commercialization Research & Development Exit Marketing

7. Confidential Information / Trade Secrets Trade Secret – Confidential Information that relates to a product or service in trade and has a commercial value Keep invention secret to protect patent rights Keep unpatentable (or marginal) inventions secret to avoid disclosure No registration process, but positive steps must be taken to preserve confidentiality Fragile rights that are easily lost by accidental disclosure or by independent development

8. Patents Patent protect practical implementation of utilitarian and functional inventions – Statutory rights that are granted for a limited time period – Very powerful rights that cannot be defeated by ignorance of a patent or independent invention Registration is required Patents and Designs Innovation Brand Development Commercialization Research & Development Exit Marketing

9. Industrial Designs / Design Patents Shapes, pattern or ornamentation that appeal to the eye No protection for functional aspects Design must be original Registration required Time limited protection – Canada 10 years, USA 14 years Patents and Designs Innovation Brand Development Commercialization Research & Development Exit Marketing

10. Trademarks Trademarks help consumers associate a product with a source Optional registration, but highly recommended to get significantly enhanced rights Potential indefinite protection, but design must remain distinctive Trademarks Innovation Brand Development Commercialization Research & Development Exit Marketing

11. Trademarks Names, Logos, Shapes, Sounds, Smells Best trademarks are coined phrases – Xerox, Kodak – Descriptive or misdescriptive marks should be avoided Owner of a registered trademark has the right to stop third parties from using confusing marks with similar wares/services Famous marks get broader protection

12. Copyright Traditionally used to protect artistic, literary, musical and dramatic works Registration not required, limited terms Can also provide limited protection for technology – Software, Database structure and contents, Website structure, layout and contents, Games, User Guides / Instructions, Logos, Theme Music Copyrights (in some cases) Innovation Brand Development Commercialization Research & Development Exit Marketing

13. Summary Patents and Designs Trade Secrets Trademarks Copyrights (in some cases) Innovation Brand Development Commercialization Research & Development Exit Marketing

14. Do I Have Anything to Protect? Consider as follows: – Right: “What would be commercially advantageous to protect?” – Wrong: “What do I think merits a patent”. What have you spent a lot of time/money to develop? What do you not want your competitors to do?

15. Publish, Trade Secret or Patent? Publish - I just want to stop others from patenting it – Not critical to my product strategy – It is unlikely that an application will successfully issue to patent Can I keep it a trade secret? – Can it be reversed engineered? – How many employees will know the information? – Are they stable employees? If neither, then patent it

16. Some Specifics about Patent Practice

17. Overview 1.The Patent Bargain 2.What is a Patent-Eligible Invention? 3.Who is an Inventor? 4.Novelty & Obviousness 5.Drafting the Patent Application 6.Examination 7.International filings

18. The Patent Bargain Enabling Disclosure of Invention In return for – Claims for Subject-Matter in which Exclusive Property or Privilege is Sought No Enabling Disclosure = No Patent

19. What is a Patent-Eligible Invention? Statutory Subject-Matter Useful New Not Obvious

20. Statutory Subject-Matter Invention must fall in a statutory class: Useful art, process, machine, manufacture, composition of matter Or an improvement of any of them.

21. Who is an Inventor? Claims determine inventorship Inventorship is a Factual Inquiry What Activity Rises to the Level of Invention? – X Workshop Improvement – X Mere Experimentation – Substitution of Known Means – X Carrying Out the Instructions of Others Requires Creativity, However Slight

22. Novelty and Obviousness Has Somebody Else Already Done it? How different is it from what was done before? Prior art searching

23. Drafting the Specification Specification = Description, Illustrations, Claims Claims Drive the Specification : – If Not Described, Can’t Be Claimed What do you want to claim? The Machine? How it is Built? How to Operate it? What it Makes? Hint No. 1: How does this invention make money? Hint No. 2: What do you want to stop people from doing?

24. Working With Your Patent Attorney Prepare an invention disclosure – What has everyone else done before you? (“prior art”)? Patents Publication Competitors products – What are the key features to protect? – How does it work? – What are its advantages?

25. Working With Your Patent Attorney – Do you need/have drawings? – Has there been any public disclosure? – Will there be a public disclosure? The more thorough the disclosure, the more cost effective Additional disclosure typically cannot be added after the application is filed.

26. Examination - Responding To Office Actions How to Help Your Patent Attorney: 1)How is the art different from your claim? 2)Why wouldn’t the art be a satisfactory substitute for the claimed invention? 3)Are we claiming the wrong thing?

27. If All Goes Well…

28. International Patent Protection Fundamentally a business decision Consider key/new markets? Competitors? U.S., Canada and Europe common China and India considered growth markets Strategic selection of jurisdictions

29. International Filing Options 1.Paris Convention – File first in one country – 12 months later in all other required countries 2.Patent Cooperation Treaty (PCT) – Unified filing/search/exam procedure – Delay national filing costs by at least 30 months

30. National, Regional, PCT Applications PCT application – One applications gets your foot in the door in most countries Delay cost International Search to determine likelihood of success Product strategy not yet developed Regional – Europe – Eurasia

31. Costs

32. Costs - Patents Searching Patentability – 2-10K Freedom to operate – country specific: 2-10K per country Legal opinions Add 10-20K

33. Patent Costs Drafting Technology dependent Initial application Life Science: 6-10K Mechanical High Tech: 15-20K Update to application Life Science: 2-4K Mechanical High Tech: 6-10K

34. Patent Costs Filing Country specific Include government fees and firm tariffs Canada – 1.5K U.S. – 4K PCT – 6K Europe – 15K

35. Patent Costs Prosecution Country specific Depends on complexity of invention and prior art Once successful in one country can use in other countries to expedite (Patent Prosecution Highway) and reduce costs 2-10K

36. Patent costs Issuance Country specific Include government fees and firm tariffs Canada – 1.2K U.S. – 2.5K Europe – complicated grant procedure and validation in each country – 5-150K

37. Patent costs Maintenance Country specific Include government fee and firm tariffs Generally increase during lifetime of patent Canada - $300-$500 U.S. – 3 times only

38. Trademark Costs* Preliminary Search: 300 Registrability search: 800 to 1000 Full Search: 1.4K to 1,8K or higher Filing to issuance: 2.5K to 3.5K per mark *for Canada only

39. Questions? Patricia Folkins, PhD, Partner pfolkins@bereskinparr.com 905-817-6101