Transcript Intellectual Property - ARCHIVED

Intellectual Property Portfolio
Management Fundamentals:
A Workshop for FPTT
by
National Research Council of Canada
Nothing herein constitutes legal advice. Always consult a patent attorney with respect to your specific situation.
Copyright NRC 2005-2008
Workshop Outline
Part I: Christine Piché: NRC IP Portfolio Management
• Patent, copyrights, trade marks
• Disclosure and publication of IP
• IP Protection
Part II: Margaret McKay, NRC IP Portfolio Management
• Legal agreements relating to IP
• Common licence terms: what are they and why are they there?
Part III: Katalin Deczky, NRC Institute for National Measurement
Standards
• Negotiating the Deal
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Part 1
• Patent, copyrights, trade secrets
• IP Protection
• Disclosure and publication of IP
Christine Piché
NRC A/Director Intellectual Property Portfolio Management
B.Eng, M.B.A., Registered Patent Agent (US, Canada)
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Forms of IP
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Patents
Trade Secrets
Industrial Designs
Integrated Circuit Topographies
Copyright
Trade-Marks
Plant Breeders’ Rights
and more….
4
Patents
• Protect new, non-obvious, useful subject matter = INVENTIONS
• New: not disclosed before filing (a few countries allow a grace
period)
• Non-Obvious: creativity must be involved, not merely
combining known things in a straightforward manner and getting
the expected result
• Useful: Patents protect ideas reduced to practice, not abstract
ideas, theorems, formulae, etc.
• Allows publication AFTER FILING
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Software patents
• Software can be patented when they are expressed as a
process, apparatus (machine) or manufacture
– They are examined as such, and compared with all known
processes, apparatus or manufacture
• Copyright and patent are complementary, the right from one
does not affect the right of the other
• Variation from state to state
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Biotech Patents
In Canada:
• Methods of Medical treatment are not patentable
• Higher Life Forms (entire) are not patentable
• Transformed cells are patentable
• A whole higher life form including one or more transformed cells
will infringe a patent on the transformed cell
• Can patent new uses of old compounds
• Can patent methods of making medicaments using old
compounds (in a new combination)
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Trade Secrets
• Work protected by Confidentiality and /or Non-Disclosure
Agreements at all times
• Never Previously Disclosed in any Form
• Will Not Prevent another person who invents the same thing
(before or after) from getting patent rights (in most countries)
• Does not allow publication EVER
• Requires protective measures to be put in place
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Trade-marks
• Protects a word, a symbol or a design (or a combination of
features) used to distinguish wares and services;
• Official marks (“Section 9” marks);
• Registered versus unregistered marks;
• Registered Mark: 15 years, renewable every 15 years
thereafter;
Important: USE and DISTINCTIVENESS
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Copyright
• Protects the form or structure of expression and not the ideas
themselves (regardless of whether they are applied or abstract)
• Concerned with exact phrasing or exact lines of computer code
• In some instances protects “derivative works” such as literal
translations between languages
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Who Creates IP?
• Everyone creates IP
• In general, those who are employed to invent (researchers,
designers, etc.) will not own their inventions – this varies by
province but generally the employer will own the invention
• It is important to report inventions when they are made and
whenever leaving an employer or joining a new employer
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Inventorship
Inventor: the person whose conception or discovery gives rise to
the invention for which a patent is sought.
• If a person merely verifies another’s previous prediction or performs
testing to demonstrate an invention’s utility, that person is not an
inventor
• Does not include the tester unless he made a substantial contribution
as a result of his tests
• Does not include superiors who overlook the work
• Or anyone else you feel you have to add by courtesy….
• Risk of improper inventorship is invalidation
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Patent Rights
• Patents provide “negative rights” - the right to sue others
• A patent owner has the right to ask a Court to stop anyone else
from making, using, selling or importing anything that falls
within the scope of issued patent claims
• A patent does not give you freedom to operate
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Patentability vs.
Freedom to use
“A” Invents the wheel
…. And gets a patent
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Patentability vs.
Freedom to use
• THEN:
“B”Invents the pneumatic tire
and shows how to use it on a wheel
.... And gets a patent
Because the pneumatic tire is new, non-obvious and useful
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Patentability vs.
Freedom to use
• Can B sell his tire on a wheel?
…
No
• Can he use his tire on a wheel?
… No
• Can he put his tire on a wheel?
… No
..WHY NOT??
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Patentability vs.
Freedom to use
• Because even though B has a patent on the tire, it does not
give him any right to use A’s invention which is the wheel.
• In order to do anything with his tire, B needs to buy from A the
right to use the tire…… and A may not want to sell….
But:
Can A use a pneumatic tire without B’s permission?
…No
Why?
…Because B has a patent…
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Patents – the Process
• Priority Filing Date
– have 1 year to file elsewhere and/or replace original filing
• Formal Applications (Filing and Prosecution)
– Inventors Provide full information to the Patent Agent
- the Patent Office searches the literature looking for things that could
make your invention non-novel or obvious
- Your IPPM IP Advisor helps in explaining what the Examiner is saying
and with your help puts to together a Response – this step may repeat
• Allowance (hopefully) of Patent
• Patent term
– is 20 Years from the filing date of the Formal Application (maintenance
fees apply)
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US Filing $1030
Assignment $62
1st maintenance
fee $930
US Issue fee
$1440
2nd maintenance
fee $2360
US
Provisional
$210
United States
CA Issue fee
$300
Canada
Publication
Filing only $400
Assign. $100
Canadian Maintenance Fees
$100
Last day for RE $1565
+ design. fee $85/state
(7 designations = all
states)
$100
0
YEARS
1
2
$100
$200
$200
$200
$200
Europe
Translation and validation
$between $5,000 to 9,000/State
European Maintenance Fees ($Euro)
$500
$700
$900
3
$200
Issue Fee $790 +
$12,00/page for more than
35 pages
Regional Phase
EPO Filing +
Search Fee $1880
Assignment 76E
Issue Fee
$300
Last day for
RE $800
4
5
6
$1000
7
$1110
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$1200
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P.S. These fees only include Patent Offices fees and do not include Agent and IPPM fees.
$1360
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Patents - Example
timeline
• January 2008 file Provisional Application
• January 2009 file formal PCT application
• July 2009 PCT application publishes, Provisional become available
for public inspection
• Late Summer 2009 Receive International Search Report and First
Written Opinion - can respond
• November 2009 File Demand for International Examination (if
desired)
• Winter 2010 receive Second Written Opinion (if Demand filed) – can
respond
• Spring 2010 (or earlier) – Receive Opinion of International Preliminary
Report on Patentability
• July/August 2010 – Deadline to enter Application into
National/Regional Phase in jurisdictions of interest
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The Patent Cooperation
Treaty
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Disclosure: keeping
your invention “New”
• What constitutes a disclosure?
– Verbal; disclosure made to anyone outside of your employer
and not under a confidentiality agreement (establish in
advance)
– Written; any document distributed to a person outside your
employer and not under a confidentiality agreement (in
advance), Whether it is slide presentation for a job interview,
posters at a conference, or actual an actual publication
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Implications of
Disclosure
• Publication of an invention is a “Disclosure”
• Publications made after a priority (Provisional) filing may still be
cited against anything contained within a subsequent formal
application which was not literally disclosed in the priority filing
• Although a few countries (US, Canada) permit filing within a
year of disclosure by the inventor, rights in most countries (e.g.
Europe) are lost by disclosure
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Options to Immediate
Filing
a) Further Development, Research, etc.
Used to address questions such as:
- Is the Technology mature enough?
- Is there strong proof of concept?
- Can you predict what variants will likely work?
- Is the marketplace going to be ready for this technology soon?
- Will it be possible to get broad enough patent claims to be
worthwhile?
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Options to Immediate
Filing
b) Defensive Publication
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•
•
•
Used where the organization does not want to exclude others
from using the technology
Used to prevent another party from patenting the same thing or
something close – keep it free for the world to use
Publication must be crafted with patent law in mind
Allows Publication
May breed competitors for later, more applied technologies you
develop and want to protect
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Why Protect?
For Inventors and Innovators:
• Some organizations provide financial incentives
• Patents may be considered a “Publication” for Performance
Review Purposes
For a Public Organization:
• Allow better control of technology to keep it in Canada – build
jobs and training opportunities here
• Allow Canadian taxpayers to get a financial return on the money
they invest supporting research
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Part 2
• Legal agreements relating to IP
• Common licence terms
Margaret McKay
NRC Intellectual Property Portfolio Management
Registered Patent Attorney (US, Canada), Registered Trade Mark
Attorney (US, Canada), M.Sc., J.D.
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Agreements Relating
to IP
Note:
• Nothing in these slides should be considered a precedent or
“best practice”.
• Some clauses have been reproduced specifically as examples
of poor or problematic phrasing or terms.
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Non Disclosure
Agreements (NDA)
• Also known as Confidentiality Agreements
• Used to Protect proprietary information
– Know how
– Trade secrets
– Any IP
• Legal contract
– Mutual
– Single sided
• Used when interacting with outside parties
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What should be
included
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•
•
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Parties (restrict to those who need to know)
Definition of what is confidential
Marking requirements
Exclusions
– Prior knowledge
– Subsequent knowledge
– Available to the public
– Material subject to subpoena
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What should be
included (cont’d)
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•
•
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Terms in years of confidentiality
Length of time the agreement is binding
Obligation of recipients re: confidential information
Signatures
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NDA considerations
Reality
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Business
Benefits/risks
Assess the harm of disclosing the information
Enforcement
Ideally
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Limit the amount of confidential information disclosed
Limit who the information is disclosed to
Protect prior to disclosing
Consider options if you have to enforce
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Assignments
• What is an assignment?
- contract
- proof of transfer of rights
• When is it used?
- to prove employer’s ownership of inventions
- to transfer ownership to an outside party (e.g. licensee)
•
When to get one?
- from inventors to employer: early (invention), and at formal
filing (different wording)
- do you need a regular assignment or something different?
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Assignments (cont’d)
• Who assigns?
- inventors
- who are the inventors
- Institutions and companies (find the legal entity and authority)
• Is the assignment valid?
- who owns the rights
- proof versus a legal vehicle for transfer
- consideration as an element of contracts
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Assignments (cont’d)
• What is being assigned?
- what was invented
- work to follow?
-priority rights
- foreign counterparts
- add ons: CIPs, extension patents, etc.??
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Example clause –
scope of rights
• All inventors signing this document acknowledge that, except as
explicitly noted herein, their entire inventive contribution made
toward this invention was completed in the course of their work
with and/or for the ______________ [employer] and no other
person or organization has any claim to the invention or any
aspect thereof and the inventors have not granted or purported
to grant rights in the invention to any other party or organization
at any time.
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IP Provisions in
Licenses and Options
• What are IP Provisions?
- Typically they are the heart and value of the contract
• Why do they matter?
- They define your organization’s ability to obtain royalties and to
deal with the technology and related technology in future
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• Field of Investigation (collaboration) or Use (license
agreement)
- limit technology
- limit timeframe
- limit to specific research groups work (not entire organization)
Note: similar considerations apply to Fee for Service agreements
but are not explicitly dealt with here.
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• Type of Rights Given
- Exclusive, sole, non-exclusive, geographically or territorially
exclusive licenses
- in Canada, avoid exclusive licenses;
-sole vs. exclusive
...protecting research program
- sole or non-exclusive, license backs, etc.
- Policy considerations
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• Obligations toward Protection
- who decides
- who pays
- what extent of filings are contemplated
- rights of organization that opts out of patenting process:
publication, freedom to use (internal use, commercial, noncommercial, fee for service research, etc.)
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Putting Bookends on
Technology under
Agreements
Background Technology –One Approach:
•
file a Canadian informal prior to revealing anything to potential partner
This creates proof of the background technology and leverage in negotiations and
provides the organization options:
a) If the receptor recognizes the full scope of background rights, can use the
informal as a priority filing in later filings and structure agreement to pay
higher (background rate) royalties on inventions embodied in the original filing
b) If the receptor is being unreasonable in their demands with respect to
background technology, can either have informal published and abandon it
(putting material into the public domain) or formalize it in Canada and file a
corresponding US case apart from the agreement with no obligations to
receptor (since filing predated their involvement). This will force the receptor
to treat this IP differently from IP arising under the collaboration.
•
use Canada not US patent office for initial filing for defensive reasons
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Bookends…Arising
Technology
Arising Technology - One Possible Approach:
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Ensure all Collaboration reports are provided in a timely manner and do not
speculate on work not done
•
researchers should not speculate even in informal comments, especially in the
later stages of the collaboration
•
keep separate, dated and independently witnessed lab books for partnered
projects (independence can be complicated, ensure the witness is under an
NDA and trustworthy)
•
educate research staff to reduce "cross pollination" which could pull
independent projects arguably within the encumbered technology
•
get a blinded 3rd party inventorship review at time of filing - clarify initial
ownership right up front
•
limit scope of Option, Licensing and Assignment obligations on the basis of
field of use, research group and time of invention
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Stray Phrases to
Watch and Define…
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•
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•
•
•
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“developed”
“based on”
“necessary for”
“underlying”
“related to”
“subject to”
“relying on”
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Part 3
Negotiating the Deal
Practical View from an NRC Institute
Katalin Deczky
Director, Business and Research Support,
NRC, Institute for National Measurement Standards
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Type of Deals
– Fee for service
•
•
•
•
Calibrations
Educational activities
Laboratory accreditation
Advisory services
– Collaborations
• Research projects
– Licenses
• Patents, copyrights, know-how
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Clients
• Dissemination activities - calibrations
• Collaborations with key industry partners
• Proactive marketing
• Clients who seek us out
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Licence types
negotiated
• Exploitation of patent rights
• Software
• Know - how
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Challenges in negotiating
licensing deals
Benefit to Canada
- how to define?
- what factors are taken into consideration?
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Challenges in negotiating
licensing deals
Canadian content
Ideally one can expect the Licensee to perform all
manufacturing of products in Canada and use Canadian-made
materials to the extent that they are reasonably available.
Canadian-based sub-licensees are subject to the same
requirement.
Foreign-based sub-licensees are not so restricted, but they are
not permitted to sell Products that will be imported into Canada.
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Challenges in negotiating
licensing deals
Access to IP rights is often insufficient – access to expertise
is frequently key to success
– The first 6 months 37.5 hours of researcher time is often
included in the licence fee.
– Further assistance is best handled under a separate feefor-service contract
• Management of arising IP needs special attention
– On-going research interest of inventors may help deal
making
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Challenges in negotiating
a licensing deal
• Points of contention in negotiations:
– Preference to grant non-exclusive licences
– Royalty rates
– Minimum royalties
– Use of NRC’s name – logo
– Definition of ‘sales’ and ‘other revenue’
– Applicable taxes
– Interest
– Laws and disputes
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Definition of “Sales”
“Sale” means any disposition of a Product, including renting,
leasing, licensing, lending and bartering of a Product. It
also means any instance of providing Service. It is
considered to occur when a Product or Service is
delivered or an invoice is issued, whichever comes occurs
first. A Sale exists irrespective of the collection of any
debt (regardless of any accounting principle), but not if
money received is refunded. “Sell” and “Sold” have
corresponding meanings.
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“Other revenue”
“Other Revenue” means all payments, and the value of
other consideration, which the Licensee is to receive in
relation to sub-licenses, other than royalties from Sales of
Products or Services by the sub-licensee. This includes,
without limitation, initial fees, milestone payments,
bonuses, periodic fees, fees for consulting, fees for
upgrades, dividends, and the value of goods, services,
equity and options to acquire equity.
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Applicable taxes
• Tax: The Goods and Service Tax, or Harmonized Sales Tax, or
Quebec Sales Tax, is applicable to all payments required by this
Agreement, depending on the residence of the Licensee or sublicensee, while none of those taxes normally applies to foreignbased payers. It is the responsibility of the payer, whether
Licensee or sub-licensee, to determine tax status and to pay to
NRC the applicable tax in addition to the payments required by
this Agreement. NRC’s GST and HST registration number is
121 491 807. NRC’s QST registration number is 1006 178 088.
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Interest
Interest: calculated and compounded monthly at the
fluctuating Payment on Due Date Interest Rate set out at
http://pwgsc.gc.ca/recgen/text/podd-e.html must be paid
on overdue amounts from the date when payment is due
until the date it is received. An administrative charge of
$25 will be invoiced for any cheque which is refused
payment by the bank on which it is drawn.
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Laws
Choice of Law: This Agreement shall be interpreted
according to the laws of the Province of
and the
laws of Canada in force there.
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Disputes
• Court: Any litigation concerning this Agreement, the
parties hereby irrevocably and unconditionally attorn to the
exclusive jurisdiction of the Courts of the Province of
_____and all courts competent to hear appeals therefrom.
The parties expressly exclude any conflict of laws rules or
principles that might refer disputes under this Agreement
to the laws of another jurisdiction. Despite the foregoing, if
this Agreement or any aspect of it becomes a subject of
judicial proceedings in the United States of America, then
the Licensee irrevocably waives any and all rights it has to
a trial by jury in the United States, and the Licensee
agrees that the matter will be heard before a judge
sitting alone, due to the nature and complexity of the
NRC Technology and applicable laws.
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Conclusions
• High percentage of licence negotiations conclude with
positive outcome
• Follow up and monitoring is necessary
• Avoiding perpetual licence arrangements allow for review
and renegotiation
• Do not forget…
Devil is in the details
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