Forms of Intellectual Property

Patent - Protects how something works; things, workings and methods
Industrial Design ( Design Patent ) - Protects how something looks
Trademark - Protects how something is known in commerce
Copyright - Protects how something is creatively expressed. Literally means the right to copy

Features of a Patent

- Converts an intangible idea into property
- Can be bought, sold or used as collateral
- National jurisdiction
- Time limited monopoly of 20 years from the filing date
- Monopoly excludes others from practicing within that territory

How to Read a Patent
Here is a brief outline of the parts of a patent
- Title, abstract: high level overview
- Background: set out problems in the art and the state of the art
- Summary of Invention: parallels the main claims
- Detailed descriptions and drawings
- Claims - The claims define explicitly the scope of the patent being held
- Ownership - Assignee or applicant field lists corporate owner. If none present, then inventor is owned

The Reasons Why to Get a Patent
Protect invention from others
- Early state, protection from “friends” ( e.g. industrial partners, collaborators, suppliers, customers)
- Later stage, protection from “competitors”
- Attracting funding
credibility and security for financiers
- Marketing cachet (“patent pending”)
on products and promotional material
- Building value in the company
especially as patent family grows around key technologies
Source of licensing revenue
particularly for research companies and institutions

What are your first steps?
- Idea collection
- Many ideas are patentable, however not all ideas are worthwhile
- Need to communicate in standardized way
- Need to decide which to pursue
- Careful forethought

What makes an idea patentable?
In Canada, must be an “...art, process, machine, manufacture or composition of matter...”
Thinking of a “better way”
Must be new, useful and non-obvious
- New: features not disclosed in a single document ( anywhere, anytime )
- Non-obvious: features not disclosure in a combination of documents
- Changes of size, substitute of materials, automation of a known process are typically not patentable

Certain categories of non-patentable subject matter
- computer programs
- algorithms or calculations
- methods of doing business
- algorithms or calculations

Software patents
“software” not patentable per se
Instead: method of doing something using a computer
Focus usually on end-user: care when drafting
Internet methods: international jurisdiction
- Where is software hosted?
- Where is the end user located?
- Where is transaction completed?

Ultimately when deciding whether or not you should file a patent, first ask yourself, "what are the business goals and is it worth pursuing"?

For more information on patents, visit:
www.uspto.gov
ep.espacenet.com
www.cipo.gc.ca

On that note, we'll leave it for today, and pick-up the rest of the discussion tomorrow.