Startups

Patents

Why is a Patent Valuable?

• Boost investor and stakeholder confidence and help with attracting investment
• Ensures market exclusivity by acting as a barrier to entry for competitors
• Can enable new revenue streams like licensing & royalty arrangements
• Can be sold as a standalone asset in exchange for a lump sum
• Enforcement on high assertion value patents (i.e. how much patent owner can collect from infringers)
• Importance of understanding the patent landscape
• Importance of having a balanced portfolio
  • Don’t want to have a patent that’s too broad and can be easily invalidated
  • Also consider the dangers of having a narrow patent that can be easily designed around
  • E.g. new pharmaceutical product

Patent Application

Copyright

• Copyrights protect an expression of an idea (including art, music, software codes etc.)

Copyright Subsistence

Must be sufficiently original

A non-trivial exercise of the author’s skill and judgment

Not copied from another work or public domain material

Not a purely mechanical exercise

In certain circumstances, not enforceable for designs applied to a useful article reproduced in quantities of more than 50 or dictated solely by utilitarian function

Copyright Notices and Certificates 

• Not required in Canada, but helpful to put third parties on notice of copyright rights
• Copyright certificates may be useful in fields with version control / tracking
• Copyright protection is national in scope, but some countries have reciprocal recognition of copyright per international treaties
• Registered copyright can be useful in litigation when enforcing a copyright

Industrial Designs

• Industrial design registrations protect the unique appearance of a product or packaging: its shape, configuration, pattern or ornament (or any combination of these features).
• Must be a new design (not previously disclosed)
• Examples: contour of a car hood, the graphical user interface on a phone, the shape of a stylish piece of furniture
• Term: 15 years

Why is an Industrial Design Valuable?

• Like patents:
  • Can boost investor and stakeholder confidence and help with attracting investment
  • Ensures monopoly over the protected design to prevent competitor use
  • Can enable new revenue streams like licensing & royalty arrangements
• May be an alternative to patents where patentability criteria are not met and product has unique design features
• Can compliment trademark rights to help establish brand recognition and reputation
• Consider aesthetic design features at the R&D phase

Industrial Design Application

Trademarks

What is a Trademark?

• Generally, any word, logo, slogan, or combination of these elements used to distinguish your business’ goods or services from those of other traders
  • Can even be a colour, sound, or smell
• The key attribute of a trademark is that it allows consumers to link a good or service with a single source

Why is a Trademark Valuable?

• A business asset that can increase the value of your business (helps quantify “goodwill”)
• Acts as a badge of quality to establish reputation and set your business’ goods and services apart from others
• Can facilitate expansion into new products, services, and markets and help you expand internationally into new markets
• Can enable new revenue streams like licensing, royalty, and franchising arrangements

Trademark Application

Trade Secrets

What is a Trade Secret?

• A form of intellectual property
• Confidential information that is economically valuable
• Protected by secrecy such as contractual obligations of confidentiality (e.g. NDAs)
• The “opposite of a patent” – securing a patent can be costly and time consuming, so some businesses and inventors choose to rely on trade secrets instead. This strategy is often used when the invention has a short lifespan or is difficult to reverse engineer
• Trade secrets are also often used for subject matter not eligible for other IP protections. E.g. consumer data, recipes for food products, or market research and analysis is generally not protected through patents, trademarks, industrial designs or copyright

Protecting Trade Secrets

• Implement contractual confidentiality obligations with employees, contractors, and business partners.
• Implement internal policies and procedures to protect confidential information, including:
  • Physical and digital security measures
  • Limiting access to “need-to-know” personnel
  • Policies for trade secret identification and protection
  • Employee, contractor, and supplier training