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An Introduction to Intellectual Property What are patents? and How can they be used? Presentation by Joe Irvine Director, TTBE uOttawa Jan. 30, 2006 For.

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1 An Introduction to Intellectual Property What are patents? and How can they be used? Presentation by Joe Irvine Director, TTBE uOttawa Jan. 30, 2006 For Dr. Hanan Anis 2nd year engineering and computer science students

2 Outline Introduction to TTBE Introduction to TTBE What is Intellectual Property (IP)? What is Intellectual Property (IP)? Legal Protection for IP Legal Protection for IP Types of, and Examples of, IP Types of, and Examples of, IP What is a patent? What is a patent? How do we file a patent? How do we file a patent? Patent Structure Patent Structure Case Study RIM vs NTP Case Study RIM vs NTP Summary and Conclusions Summary and Conclusions

3 Technology Transfer & Business Enterprise (TTBE) is part of the Office of the Vice-President, Research What does TTBE do? Establish Research Partnerships Establish Research Partnerships Negotiate and Support Contract ResearchNegotiate and Support Contract Research Establish Technology Partnerships Establish Technology Partnerships Identify and Protect Intellectual Property (IP)Identify and Protect Intellectual Property (IP) License and Commercialize IPLicense and Commercialize IP

4 Facilitate New Research; Facilitate New Research; Support Institution and Researchers; Support Institution and Researchers; Provide Researchers with new Opportunities and Tools Provide Researchers with new Opportunities and Tools Corporate Responsibility Corporate Responsibility Transfer IP to Business for Economic Benefit Transfer IP to Business for Economic Benefit Why does the University protect (and commercialize) IP?

5 What is Intellectual Property (IP)? Legal Definition: Intellectual Property (IP) refers to all materials, concepts, know-how, formulae, inventions, improvements, industrial designs, processes, patterns, machines, manufactures, compositions of matter, compilations of information, patents and patent applications, copyrights, trade secrets, technology, technical information, software, prototypes and specifications, including rights to apply for protections under statutory proceedings available for those purposes, provided they are capable of protection at law. Legal Definition: Intellectual Property (IP) refers to all materials, concepts, know-how, formulae, inventions, improvements, industrial designs, processes, patterns, machines, manufactures, compositions of matter, compilations of information, patents and patent applications, copyrights, trade secrets, technology, technical information, software, prototypes and specifications, including rights to apply for protections under statutory proceedings available for those purposes, provided they are capable of protection at law. Source: Networks of Centres of Excellence Agreement

6 What is Intellectual Property (IP)? Intellectual Property is any form of knowledge or expression created using (your) intellect. IP includes inventions, computer software, trademarks, literary, artistic musical or visual works and expertise or know-how. Some IP can be legally protected.

7 Legal Protection for IP 7 major forms of Legal IP Protection Agent Granting 7 major forms of Legal IP Protection Agent Granting Trade SecretsCorporationTrade SecretsCorporation PatentsGovernmentPatentsGovernment Trade MarksGovernmentTrade MarksGovernment CopyrightsGovernmentCopyrightsGovernment Industrial Designs GovernmentIndustrial Designs Government Integrated Circuit Topographies GovernmentIntegrated Circuit Topographies Government Plant Breeders RightsGovernmentPlant Breeders RightsGovernment Trade Secrets – Some know-how, expertise, techniques and formulas are protected by being kept as trade secrets – this requires Confidentiality agreements with employees etc. Perhaps most famous corporate examples are formulas for Coca- cola and Kentucky Fried Chicken Trade Secrets – Some know-how, expertise, techniques and formulas are protected by being kept as trade secrets – this requires Confidentiality agreements with employees etc. Perhaps most famous corporate examples are formulas for Coca- cola and Kentucky Fried Chicken

8 Forms of Legal Protection for IP Patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention; Patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention; Trade-marks are words, symbols or designs (or any combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace; Trade-marks are words, symbols or designs (or any combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace; Copyrights provide protection for literary (including software), artistic, dramatic or musical works and performance, sound recording and communication signal Copyrights provide protection for literary (including software), artistic, dramatic or musical works and performance, sound recording and communication signal

9 Forms of Legal Protection for IP - 2 Industrial Designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture; Industrial Designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture; Integrated Circuit Topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs; Integrated Circuit Topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs; Plant Breeders Rights provides protection for new varieties, if new, distinct, uniform and stable from generation to generation). Plant Breeders Rights provides protection for new varieties, if new, distinct, uniform and stable from generation to generation).

10 Intellectual Property Protection Most forms of IP protection are rights granted to an individual or organization by the federal government for that country (Originally were rights granted by the King) Most forms of IP protection are rights granted to an individual or organization by the federal government for that country (Originally were rights granted by the King) Each country has its own IP rights – which means you must seek IP protection in each country you wish to commercialize the invention Each country has its own IP rights – which means you must seek IP protection in each country you wish to commercialize the invention Countries are (slowly) making IP protection process comparable Countries are (slowly) making IP protection process comparable PCT convention allows for international filing of patents and European patent office allows for simultaneous filing in all (or selected) countries in the EU PCT convention allows for international filing of patents and European patent office allows for simultaneous filing in all (or selected) countries in the EU

11 What is the commercial purpose of IP? 1. IP establishes a right and identifies ownership of the intellectual creativity which enables its owner to profit from the creative endeavour and to exclude others from making, selling or using the same without the necessary authorization. 1. IP establishes a right and identifies ownership of the intellectual creativity which enables its owner to profit from the creative endeavour and to exclude others from making, selling or using the same without the necessary authorization. 2. IP enhances the value and profitability of a business. It signifies a certain standard, method or competitive edge and lays the groundwork for maximizing on the commercial results of its ownership. 2. IP enhances the value and profitability of a business. It signifies a certain standard, method or competitive edge and lays the groundwork for maximizing on the commercial results of its ownership. 3. IP assets accrue to their owners through its business development and strategies: from product development to design, from service delivery to marketing, and from raising financial resources to exporting or expanding its business through licensing or franchising. 3. IP assets accrue to their owners through its business development and strategies: from product development to design, from service delivery to marketing, and from raising financial resources to exporting or expanding its business through licensing or franchising. 4. IP instills trust, confidence and loyalty to the consumers it markets through a distinct identity, image and reputation.

12 Canadian Intellectual Property Office United States Patent and Trademark Office

13 Examples of IP The terminology of IP can seem complex The terminology of IP can seem complex To see examples of the four major commercial forms of IP – Patents, Copyrights, Industrial Design, Trademark the Canadian Intellectual Property Office on-line database was searched for each type of IP using the same keyword phone To see examples of the four major commercial forms of IP – Patents, Copyrights, Industrial Design, Trademark the Canadian Intellectual Property Office on-line database was searched for each type of IP using the same keyword phone

14 Canadian Industrial Designs Database Search for: Phone in Title From To found CELLULAR PHONE BASE STATION CELLULAR PHONE BASE STATION Page 1 of CELLULAR PHONE CHARGING BASE CELLULAR PHONE CHARGING BASE Page 1 of 4 Industrial designs consist of diagrams of the final manufactured form of a product

15 Canadian Copyrights Database Search for: Phone in the Title Documents found: 44 Search for: Phone in the Title Documents found: 44 5.Chinese Phone Directory Registration number: Type: Copyright Author: Wang, (Andy) Cheng - Hsiung Owner: Asia Phone Book Inc. Registration Date: Chinese Phone Directory Registration number: Type: Copyright Author: Wang, (Andy) Cheng - Hsiung Owner: Asia Phone Book Inc. Registration Date: Chinese Phone Directory Chinese Phone Directory 6.Filipino Toonie Talk Prepaid Phone Card Registration number: Type: Copyright Author: KadCom Services Limited / Kader, Kandoker Faisal / c/o KadCom Services Limited Owner: KadCom Services Limited Registration Date: Filipino Toonie Talk Prepaid Phone Card Registration number: Type: Copyright Author: KadCom Services Limited / Kader, Kandoker Faisal / c/o KadCom Services Limited Owner: KadCom Services Limited Registration Date: Filipino Toonie Talk Prepaid Phone Card Filipino Toonie Talk Prepaid Phone Card 7.Caillou - The Phone Call Registration number: Type: Copyright Author: Pleau-Murissi, Marilyn Owner: Les Éditions Chouette (1987) inc. 7.Caillou - The Phone Call Registration number: Type: Copyright Author: Pleau-Murissi, Marilyn Owner: Les Éditions Chouette (1987) inc.Caillou - The Phone Call Caillou - The Phone Call Copyright covers the content of documents, software etc.

16 Canadian Trade-marks Database Search for: Phone in the TM Lookup: All from 1 January 1865 to 17 January 2006 Documents found: 853 Search for: Phone in the TM Lookup: All from 1 January 1865 to 17 January 2006 Documents found: 853 YOUR PHONE AWAY FROM PHONE, REGISTERED, , TMA YOUR PHONE AWAY FROM PHONE, REGISTERED, , TMA (9K) YOUR PHONE AWAY FROM PHONE, REGISTERED, , TMA THE BOOK THE PHONE COMPANY DOESN'T WANT YOU TO READ, REGISTERED, , TMA THE BOOK THE PHONE COMPANY DOESN'T WANT YOU TO READ, REGISTERED, , TMA (7K) THE BOOK THE PHONE COMPANY DOESN'T WANT YOU TO READ, REGISTERED, , TMA Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP., EXPUNGED, , TMA (8K) Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP., EXPUNGED, , TMA (8K)Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP., EXPUNGED, , TMA Trademarks: PICK IT UP.PHONE IT UP.LIVE IT UP., EXPUNGED, , TMA Trademarks are a name, logo, design or slogan for a commercial enterprise

17 Canadian Patents Database Search ((Phone)) 1930 documents out of matched your query USER AUTHENTICATION SYSTEM AND METHOD USER AUTHENTICATION SYSTEM AND METHOD METHOD AND SYSTEM FOR PROVIDING SUPERVISORY CONTROL OVER WIRELESS PHONE USAGE METHOD AND SYSTEM FOR PROVIDING SUPERVISORY CONTROL OVER WIRELESS PHONE USAGE PHONE NUMBER REPLACE CODE SYSTEM AND METHOD PHONE NUMBER REPLACE CODE SYSTEM AND METHOD NETWORK TELEPHONE SYSTEM AND METHODS THEREFOR NETWORK TELEPHONE SYSTEM AND METHODS THEREFOR SYSTEM AND METHOD TO INITIATE A MOBILE DATA COMMUNICATION UTILIZING A TRIGGER SYSTEM COMMUNICATION UTILIZING A TRIGGER SYSTEM MULTIPLE SERVICE PROVIDER PREPAID WIRELESS SERVICE CARD MULTIPLE SERVICE PROVIDER PREPAID WIRELESS SERVICE CARD SEARCHING ADRESS BY NUMERICAL CODES SEARCHING ADRESS BY NUMERICAL CODES Patents often describe a method or process

18 What is a patent? With a patent, the government gives the inventor, the right to exclude others from making, using or selling the invention for a maximum of 20 years after the patent was filed. With a patent, the government gives the inventor, the right to exclude others from making, using or selling the invention for a maximum of 20 years after the patent was filed. In exchange, the inventor must provide a full description of the invention and the Patent Office will publish the application 18 months from the first filing date for people to read about, (but not make, use or sell) the invention to promote the sharing of technological information. In exchange, the inventor must provide a full description of the invention and the Patent Office will publish the application 18 months from the first filing date for people to read about, (but not make, use or sell) the invention to promote the sharing of technological information. PATENTS are: PATENTS are: 1) documents protecting the rights of the inventor; and1) documents protecting the rights of the inventor; and 2) a public repository of technical information.2) a public repository of technical information. The rights conferred by a patent extend throughout the issuing country - but not to other countries, which must be applied for in each country. The rights conferred by a patent extend throughout the issuing country - but not to other countries, which must be applied for in each country. Source: http//:cipo.gc.ca

19 Novelty, Utility, Ingenuity Novelty:The original inventor of the first such invention in the world can be granted a patent ONLY if the invention has NOT been made public before you filed the application. Novelty:The original inventor of the first such invention in the world can be granted a patent ONLY if the invention has NOT been made public before you filed the application. Utility:A valid patent cannot be obtained for something that doesn't work, or that has no useful function. Utility:A valid patent cannot be obtained for something that doesn't work, or that has no useful function. Ingenuity/Obviousness:The invention must not be obvious beforehand to workers of average skill in the technology involved. Ingenuity/Obviousness:The invention must not be obvious beforehand to workers of average skill in the technology involved.___________________________________________________ Improvements: An improvement to an existing patented invention, can be patented - but the original patent may still be in force and the making of the improvement would probably be an infringement.

20 How do you file for a patent? Invention Disclosure: Describe invention, list unique features of invention, all inventors, relevant literature/patents, dates and records (including any data) documenting invention Invention Disclosure: Describe invention, list unique features of invention, all inventors, relevant literature/patents, dates and records (including any data) documenting invention Preliminary Patent Search: Key words from Invention Disclosure (US PTO; CIPO) Find related patents. Use these as a guide for patent scope and description. Need to include all/any relevant patents in list of relevant background to invention Preliminary Patent Search: Key words from Invention Disclosure (US PTO; CIPO) Find related patents. Use these as a guide for patent scope and description. Need to include all/any relevant patents in list of relevant background to invention

21 Filing a patent – Next Steps Formal patent search Formal patent search Drafting patent Drafting patent DrawingsDrawings ClaimsClaims Review by Inventors and Patent Agents Review by Inventors and Patent Agents Filing with Patent Office Filing with Patent Office Patenting StrategyPatenting Strategy Countries to fileCountries to file Provisional patentProvisional patent Patent Structure Abstract Abstract Field of Invention Field of Invention Brief Description of Invention Brief Description of Invention Description of Prior Art Description of Prior Art Description of Invention Description of Invention Drawings of Invention Drawings of Invention List of Claims List of Claims

22 Relation of New Patent Application to Existing Patents Each patent is a description of a novel invention that builds on the prior art Each patent is a description of a novel invention that builds on the prior art 1 st relevant patent has the broadest scope 1 st relevant patent has the broadest scope 2 nd patent builds on disclosure of 1 st patent and includes improvements and different applications 2 nd patent builds on disclosure of 1 st patent and includes improvements and different applications 3 rd patent builds on both patents for a smaller scope and different application 3 rd patent builds on both patents for a smaller scope and different application Specific claims of unique and novel features cannot overlap with previous patents but can build on the prior art to create a new invention/patent Specific claims of unique and novel features cannot overlap with previous patents but can build on the prior art to create a new invention/patent Rights to commercialize may be dependent on access to prior art and previous patents unless they have expired Rights to commercialize may be dependent on access to prior art and previous patents unless they have expired Wheel ACME Corp Bicycle Wheel ACME Corp Wheel chair Medical Corp Scope of Claims Time Figure based on Protecting Scientific Ideas & Inventions (1988) CRC Press

23 Patent Prosecution - Timelines Filing the Patent (t=0) Filing the Patent (t=0) 1 st Office Action 1-3yrs (Response) 1 st Office Action 1-3yrs (Response) Publication 1.5 yrs Publication 1.5 yrs 2 nd Office Action 2-5 yrs (Response) 2 nd Office Action 2-5 yrs (Response) Examination Decision Examination Decision Rejection or IssuanceRejection or Issuance Patent Coverage from t=0 to t=20 yrsPatent Coverage from t=0 to t=20 yrs Some countries 17 yrs from issuanceSome countries 17 yrs from issuance Annuity Fees required to keep patent rights Annuity Fees required to keep patent rights Patents issued in 2006 will likely provide protection until 2021 Patents issued in 2006 will likely provide protection until 2021

24 Research In Motion Inc. vs. New Technologies Products Inc Commercial IP Litigation RIM has 123 US patent issued since 1993 RIM has 123 US patent issued since 1993 NTP (and predecessors) have 5 patents issued between 1995 and Nov 2001 NTP (and predecessors) have 5 patents issued between 1995 and Nov 2001 Patents issued to Inventor and licensed or assigned to 3 companies founded by InventorPatents issued to Inventor and licensed or assigned to 3 companies founded by Inventor Eventually purchased from bankrupt company by lawyer and inventor.Eventually purchased from bankrupt company by lawyer and inventor. NTP was a holding company only for these patentsNTP was a holding company only for these patents 2000 NTP sends form letter to RIM warning about direct infringement on its wireless patents 2000 NTP sends form letter to RIM warning about direct infringement on its wireless patents May 2001 RIM sues Glenayre Electronics and issues media release about users will have to license RIM patents May 2001 RIM sues Glenayre Electronics and issues media release about users will have to license RIM patents Nov 2001 NTP sues RIM for infringement Nov 2001 NTP sues RIM for infringement Globe & Mail Jan 28, 2006

25 RIM vs NTP Nov 2002 Court proceedings begin Court rules in favor of NTP; Issues Damages at US$23M plus royalty; US PTO re-examines NTP patents (to be completed 2006) Nov 2002 Court proceedings begin Court rules in favor of NTP; Issues Damages at US$23M plus royalty; US PTO re-examines NTP patents (to be completed 2006) March 2003 Court increases damages to US$60M due to RIM legal tactics and testimony March 2003 Court increases damages to US$60M due to RIM legal tactics and testimony Aug 2003 Injunction issues forbidding RIM sales within US (stayed ending appeal) Aug 2003 Injunction issues forbidding RIM sales within US (stayed ending appeal) Dec 2004 Verdict upheld on appeal Dec 2004 Verdict upheld on appeal Globe & Mail Jan 28, 2006

26 RIM vs NTP Mar 2005 RIM NTP reach $450M settlement Mar 2005 RIM NTP reach $450M settlement Jun 2005 RIM NTP agreement unravels Jun 2005 RIM NTP agreement unravels Aug 2005 Case goes to US Supreme Court Aug 2005 Case goes to US Supreme Court Sep 2005 US PTO rejects NTP patents but does secondary review Sep 2005 US PTO rejects NTP patents but does secondary review Dec 2005 US PTO rejects 4 of 5 patents, continues review on 5 th. NTP receives 30 day extension to respond before final rulings Dec 2005 US PTO rejects 4 of 5 patents, continues review on 5 th. NTP receives 30 day extension to respond before final rulings Jan 2006 Supreme Court refuses to hear case Jan 2006 Supreme Court refuses to hear case Next month: Feb 2006 Judge to hold hearing on injunction and damages Next month: Feb 2006 Judge to hold hearing on injunction and damages Globe & Mail Jan 28, 2006

27 Conclusion Intellectual Property Protection – including patents – are government issued rights to inventors Intellectual Property Protection – including patents – are government issued rights to inventors Rights include right to sue infringers Rights include right to sue infringers Patents are only as good as the legal fees you have to back them up Patents are only as good as the legal fees you have to back them up Patents are commercial assets (and business tools) that companies can use to raise investment, protect products and technology and can be tools to litigate against competitors Patents are commercial assets (and business tools) that companies can use to raise investment, protect products and technology and can be tools to litigate against competitors

28 Summary There are several types of intellectual property protection: including patents, copyright, trademark and industrial design There are several types of intellectual property protection: including patents, copyright, trademark and industrial design Patents recognize novelty, ingenuity (non- obviousness) and utility Patents recognize novelty, ingenuity (non- obviousness) and utility Patents build on prior art and require public disclosure 18 months after filing Patents build on prior art and require public disclosure 18 months after filing Patents protect inventions Patents protect inventions Patents are government rights that give commercial and legal protection to inventions and the ability to litigate against competition Patents are government rights that give commercial and legal protection to inventions and the ability to litigate against competition


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