IP Talks: Protect your intellectual property

IP Talks: Protect your intellectual property

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Hello and welcome everyone again. As I mentioned, this is the first session of IP talks. So this is a series of five webinars to help Canadians use intellectual property more effectively. So these webinars cover the typical  lifecycle of IP, the available government supports, as well as key IP considerations  when taking a business abroad. So we have a really interesting session for you today – so, let’s get started! So today we're going to talk about IP and  the role of intangible assets and what they how they play in the modern economy. But before this there were assets, mostly coming from natural resources that were refined into tangible assets.

Which brings me to something that I'd  like to acknowledge before we begin. Let's take a moment to think about which territory  you're on, and recognize that the Indigenous peoples are the traditional stewards  of the lands and waters where each of us are meeting today. I want to respectfully acknowledge that we  are working on different Indigenous lands that have been inhabited by  Indigenous peoples from the beginning. I am living in the Ottawa / Gatineau region and  so I am on the unseeded traditional territory of the Algonquin Anishinaabe people. Thank you. So in this first session you'll learn  the foundations of intellectual property.

So, for example, trademarks, patents, industrial  designs, copyrights, trade secrets, and more. You will also learn from IP professionals  how intellectual property is protected and used in practice. IP talks is the first collaboration of our  recently launched IP Village initiative which includes organizations that  help build Canadian businesses. So our core partners are the Business  Development Bank of Canada, which support Canadian entrepreneurs by providing financial consulting and venture capital services. The Global Affairs Canadian Trade Commissioner Service, which provides resources and contact information to help businesses with export counseling and financing and market strategy information and support. Export Development Canada, which supports and  develops Canada's export trade and Canadian capacity to engage in that trade and respond  to international business opportunities.

The National Research Council's Industrial  Research Assistance Program, which offers a range of support to stimulate wealth  creation for Canada through innovation. Of course, the Intellectual Property Institute  of Canada, the voice of intellectual property professionals, three of whom  are joining us here today. The Department of Innovation, Science and  Economic Development Canada and of course, the Canadian Intellectual Property Office. So we know that it takes many people's help to build a successful business, and we're here to help you every step of the way.

So today's webinar is hosted is co-hosted by  CIPO and IPIC and I am thrilled to introduce our speaker panel. First, we have Louis Martineau who is a registered  Canadian Patent and Trademark agent and a partner of the firm Lesperance  & Martineau in Montreal. Louis has an undergraduate  degree in mechanical engineering.

He specializes in drafting and prosecution of  Patent and Trademark applications for local and international clients. Louis will show you an innovative and creative  product and will also show you how different types of IP can protect  different parts of that product. Next we have Brigide Mattar who is an electrical  and computer engineer, a patent agent and a partner of Smart & Biggar, one  of Canada's largest IP firms. In her practice, Brigide leverages nearly 25  years of experience in counseling business leaders in small and medium size innovative  companies on how to design and execute patent protection strategies that support business goals. Brigide will talk about how various forms of IP are used to protect computer software, artificial technology, and other tech patents.

And finally, we have Louis-Pierre Gravelle  who is a partner with Bereskin & Parr located in Montreal and a member of the Electrical  and Computer Technology Practice group. He is a recognized leading professional in  the high tech and artificial intelligence areas and his practice focuses on patent and  technology law, particularly obtaining and leveraging intellectual property rights for  startups, SMEs and large companies to support them in their commercial  growth and business success. Louis-Pierre is also the President and chair of the Board of the Intellectual Property Institute of Canada. He will talk about IP protection  strategies in emerging technologies. So a very warm welcome to all of our speakers  and an extended thank you from CIPO for offering your expertise to this audience. So a little bit about myself.

I'm Neena Kushwaha and I'm the director of  CIPO's IP awareness and education services. I'm a scientist by training and have been  involved in the IP space for over 15 years. I've a keen interest in helping Canadians and  their businesses realize their IP potential and translate their ideas into commercial success. This all starts with awareness and education. So in this webinar I will show you the foundations  of IP and then I will hand over the presentation to our speaker panel who will talk to  you about how IP works in practice. But before we go into details about brands, inventions and creations, let's take a look at an  important shift in our economy. So Canada and the majority of developed economies are moving towards a knowledge based economy.

An economy based on intangible assets. This chart is based on the market value of 500 large companies listed on stock exchanges in the United States and illustrates the  relative proportion of intangible assets. So these are indicated in yellow and these are  things such as brands, IP, data, versus tangible assets which are indicated in blue. So things like inventory.

In 1975, only 17% of the market value of this  index was based on intangible assets, but today, intangible assets represent over  90% of the S&P 500 index total value. So how can these intangible assets represent such a big proportion of a company's market capitalization? What are they, and how do they relate to IP? So a large portion of these intangible assets are not actually identified on a company's balance sheet. So for example... the investors' confidence in a company's know-how, R&D capability, supplier and customer networks. These are all things that  constitute the intellectual capital.

The result of strong intellectual capital  is often tied to intangible assets that are identifiable, so things like R&D  outputs in the forms of patents, strong brands, popular designs, well kept secrets, and IP rights in relevant markets. This is all intellectual property. So really, IP rights are business tools with legal strength to protect many forms of intellectual capital in a company. So now let's see how this is typically done. Here's a visual that demonstrates  how most companies use IP.

Most companies are based on some sort of unique  offering, so a product or service or a way of doing something which is their core business. This can be protected by a patent or trade secret, for example. Then there are a range of descriptions to describe this unique offering, so things like photos, manuals, websites...

in the case of software, the exact code which can be protected by copyright. And finally, often a brand or a look of a  product and service that helps customers identify the identity or the source  of that product and service. So these things can be protected by  trademark and/or an industrial design. And all these rights work differently. Some require examination and take time to get, some are instant, so it's important  to consider all these in the plan. It's not unusual for companies to rely on  trademark protection while their patents are still pending, for example.

As trademarks are faster and... they're faster to get and they can protect the connection with their customers. So let's move on to see what  the different types of IP are. Here are the most traditional forms of IP and  what they cover, so I'm I'm not going to go into great detail as CIPO has many online courses and guides on our website to help you learn more about these. And we're also going to hear from our panelists on how different types of IP can be put into practice and what considerations should be taken.

But here's a brief overview: so we have trade  secrets which are instant non-registered IP. A trade secret can include any type of business information that has commercial value that's derived from its secrecy. Of course we have patents which apply to new, useful and non obvious inventions or improvements to an existing invention.

We have copyrights which apply to  original creative works, such as literary, artistic, dramatic or musical works, and again can also protect exact code and software- with respect to software. And as you may be aware, with the upcoming changes in legislation, protection will be extended from 50 years to 70 years in Canada. We also have industrial design, so these are the  things that appeal to the eye of a particular product. So the unique shapes and pattern. We also have trademarks which is what we often see first as consumers and how we navigate the marketplace. And these have indications that can distinguish goods or services from one person or company compared to others.

There are plant breeders rights  which apply to variety of plants. And then there's also a variety of non traditional  forms of IP, including fictitious names, domain names, social media accounts, territorial  rights and publicity rights to name a few more. So now you know the importance of IP and how  inventions and brands are key drivers of a company's value in today's economy. Our panelists will provide practical examples of how companies typically use forms of IP to protect core functionalities, expressions, and brand identity. But because these assets can become very valuable, it's important that you treat them as such, since disorganized IP management can lead to IP theft, loss of reputation and income and a significant decrease in a company's value.

So it's a common misperception that  creators of IP are automatically the owners. And it's also common to assume that if you  paid someone to create IP, you automatically assume you automatically own it. So here are a handful of things a company can do better to safeguard their IP. In terms of policy, you can document and communicate the obligations and standards of behavior that are expected within a company.

So, for example, what is the default position on  IP ownership in company policies and agreements? One of the expected behaviors could be to report new inventions through internal IP disclosure. Ensure that you know how to talk about IP. So for example for innovating companies, make sure that there are control measures in place for public self-disclosures.

It's a very common mistake to reveal too much  information about inventions before they are properly protected, and this could  present a significant challenge later on. Make it a habit to search for IP to keep an  eye out for the competition and to also gauge your own existing and potential  footprint in the IP landscape. And then control your IP ownership in writing  in the form of contracts, for example. So be sure to understand your IP ownership rights and if you need help, consult a legal expert.

So CIPO and its collaborators know how important  it is to protect and leverage intellectual property at all stages of  the company's development. And that's why we've formed the IP village  and why we've collected and streamlined a number of resources to make sure  that you can use your IP effectively. So...

This concludes the IP foundations part of  the presentation, and I will shortly hand you over to our excellent speakers, who will  explain how IP is protected in practice. Our first speaker is Louis Martineau. So Louis... perhaps you can shed some light on what are some practical advice that you can share for mass market consumer products? Thank you Neena, I'm glad to be here.

So, how to know what can be protected by IP in practice? This is a very important question to ask ourselves as entrepreneurs and business managers. Developing an IP strategy for products, such as products destined for mass market production for example, but others also, requires evaluating the products to see what can be protected. This includes typically discussions between the IP professional and their client, from which there will yield IP searches to evaluate the availability of IP rights.

But also, not only do we want to determine which IP rights are available, but which ones are commercially relevant for the product owner. So there might be inventions and trademarks that are available, but perhaps they are not worth investing in. This is something that will be discussed, including within the confines of what budget is available for the product owner.

Here is a concrete real world example of how IP  can be used to protect a mass market product. These products are 3D puzzles sold  by the company Wrebbit that you might have seen during the Christmas time on  the shelves of stores near you. These puzzles include puzzle pieces that,  when assembled, will form 3D representations of objects such as for example well  known buildings or the Titanic.

So let's see what can be protected on  this product and what the company Wrebbit has actually protected in practice. The 3D puzzle is sold in a disassembled  state in boxes as any puzzle would be. These boxes are identified with name and logos  that you can see, for example, on this box.

For this product there are several IP rights  that can be considered to be secured for the company that is the owner of the product. Patents, trademarks, industrial, copyrights, and trade secrets. The IP professional will interact and discuss with their client what the best strategy can be for them to secure IP rights on their product. The patents generally protect  functional features of an invention.

For the 3D puzzle, an initial evaluation of  the possible patent protection is made, and this discussion might reveal several options  for patent protection by the product owner. Firstly, the puzzle pieces that  you see on this slide right now, comprise a foam backing that has a certain thickness which is covered by a color, by a paper cover that includes a part of the depiction of the product that will be formed when the puzzle pieces are assembled. The thickness of the paper foam of the foam backing allows the walls of the puzzle to stand upright. However, this particular concept was revealed to be already known at the time that the product was invented. And consequently, could  not be protected by patent. A second aspect of this product that could  have been protected by patent is the specific glue compound that was used and that is used  to secure the paper cover to the foam backing.

In particular, Wrebbit came up with a particularly  interesting compound that not only allowed the paper cover to adhere to the foam backing properly, but to prevent the paper cover from wrinkling. However, this particular element of their invention was considered to be protectable by a trade secret since it could not be reversed engineered, which possibly allows protection on the glue compound for a time period that might go beyond the 20 years that could have been obtained through a patent protection. The actual protection obtained in the end  by Wrebbit relies on the combination of two different attachments for the puzzle pieces. Firstly, on the right hand side you have the  dovetail joints that are used to assemble the puzzle pieces that form flat puzzle  walls like on any ordinary puzzle. And then on the left hand side you can see  these square joints that are used for puzzle walls that intersect at an angle because the  dovetail joints could not be used for puzzle walls that intersect on angles  because of their configuration.

To copy the patent, a competitor of Wrebbit  would need to include both types of attachments in their product. And this is in practice  the patent protection that was obtained. On the side of trademarks, Wrebbit  applied for three trademark applications. The first one is the design mark that you  can see on this slide, which is the Wrebbit 3D puzzle with the particular  figurative aspect that is depicted here.

They also they also have and filed for trademark  protection on two additional trademarks, which is the Wrebbit 3D mark and the Wrebbit mark  and both of those cases those are so called word marks and in the end they might have  protection on all of those trademarks in association with puzzles. This would mean that to infringe on their rights  a competitor would have to use a trademark that is confusingly similar with  either one of those three trademarks. There is then the industrial designs that  can be obtained as IP protection on products that have a particular visual  feature associated to it. In the case of the of the 3D puzzles from Wrebbit, these features can include the shape of their products. Generally packaging,  containers, the body of a vehicle, clothing, casings, display stands.

Those are all devices or elements or products  that can be protected through the industrial design due to their distinctive shapes. Copyrights protect artistic, literary, or musical creations. Wrebbit might have protection on the artistic  renditions of its 3D puzzles, such as the picture that is applied on the paper  cover if it is an original creation. So that concludes the overview of what  Wrebbit might have as an IP protection.

I will end this part of the discussion  by busting a few myths that relate to IP. First myth: it is necessary to have a prototype  in order to file a patent application. This is false. All that is required to file a patent application is to have plans and a description of the invention, at least in the vast majority of cases.

Second myth: minor modifications are  sufficient to avoid IP protection. This again is false. We heard we hear that now and again: "Oh, if I just change this crew for a bolt to this or change the shape of the product only slightly, this will circumvent the patent that is obtained and that protects that product". That is in the vast majority of cases, false. A patent or a registered industrial design

covers more than the exact replication of the product as it is sold. For instance, in the Wrebbit 3D puzzle example,  we saw that the patent protection relied on the combination of two types of joints, so  any competitor might do any other type of puzzle that includes those two types of joints  would be infringing on their product even if their product is not otherwise  identical to Wrebbit's product. A trademark registration also against the  also protects against the use not only of identical marks, but any other mark that might  be confusingly similar, with the mark that is registered in the name of the IP owner. Third myth: IP is only worth the money you have to sue infringers.

This again is false. Most IP rights offer value to the IP  owner without going to court ever. The IP will be used to incite clients to  buy the product that is protected by the IP. It will be used to strike commercial deals. It will be used to obtain funding.

The IP will be used to force competition  to design around and avoid the IP. You invest a lot of resources and  time and money into your innovations. It is worthwhile to get advantages out of  those investments by protecting your IP.

Thank you. I will now transfer the... Thank you, thank you, Louis. Thank you for the myth busting and also for providing insights on how to protect tangible products. So we'll now pass the floor  onto position to Brigide Mattar, who will speak to us about protecting intangible products.

Thank you very much, Neena. I'm also very happy to be on this panel and I want to thank CIPO and IPIC for taking the time to organize these sessions. I hope that they will be useful to Canadian  entrepreneurs and to others who are interested in intellectual property.

So computer software and increasingly artificial intelligence are forming an important part of today's innovative landscape. In recent years, I think it's fair to say that  there has been an acceleration in digitization, automation, and everything that we see  seems to indicate that this is likely to be a persisting trend. As a result, a lot of investments are being  made in a broad range of these sectors, and it is key for entrepreneurs to understand  how this type of innovation can be protected and so that they can remain domestically  and internationally competitive. So in this part of the talk I'm  going to discuss how IP rights can be applied and used in connection with software, AI and other tech innovations.

And as you can imagine, this is a relatively  broad topic, so I don't think I can render it justice in the time we have today. But if there are questions that come up later on I'm more than happy to have a further discussion about this. So in terms of what I'll be talking about  today, there will be 3 separate sections, the first one I'll be starting the  with is what Louis ended with his presentation and I'm going to tackle some of  the myths that are particularly applicable to software related innovations. After that, we'll look at the different types of IP rights and how they can used with some complementarity to protect these kinds of innovations.

And then we'll look at two different case studies to illustrate these aspects. So in terms of the myths that are common on  software and that we keep hearing, unfortunately regularly; the first one is software is not patentable. So that is that is false. It is completely false. There has been some misunderstandings when  people say that software is not patentable, really what they mean is  that the software code the program code is not protected by patent,  but rather is protected by copyright.

But we're really talking about  the actual code when we say that. The things like processes, GUIs, computer  implemented solutions so what the function of the software actually does is not covered  by copyright it, but it is covered by patent protection, provided it satisfies the  requirements of patent protection. So that's the first one. Second myth also very common in the area of software, is that the technology advances so fast that it's really useless to get a patent, because by the time you get it, you're already the technology is obsolete.

And that is also not completely correct. First off, the patent does not protect, for example, a software release. I realize that in some sectors there are software releases every six months. But that's not what the patent protects. You really have to focus on what  is the core of the innovation? What are the core business benefits  that you're looking to see? What are the core solutions? And if you're doing the patents properly by integrating reasonable predictions as to how the software will evolve and very often software developers are able to do that, they know what the 2nd, 3rd and 5th release of their software is going to look like. And if you do that properly, you can integrate that into your patent and it will last much longer than your single release.

Third myth that we hear quite a lot is that  trade secrets can be an effective form of protection for software innovations. And for that one, you have to be very careful. Trade secrets can be useful, but only to the  extent that your innovation and your software innovation can be kept secret. This basically means that if what you're what's really new about your innovation can be observed by a user or by your customer and or if it could be reverse engineered, then trade secret is not an effective form of protection. Again, trade secrets is really only applicable  if you can keep the innovation secret. So now that we've gone through really looking  at on the patent side as to that, it is an applicable form of protection  for software innovations. What we re going to be looking at now are  there other different forms of protection that can be used to protect high  tech and software based innovations.

And this is similar to the slide that Neena  presented earlier in her introduction, in that we talk about trademarks, patents, industrial  designs, copyrights and trade secrets and each one covers a different part or a different  angle of the innovation that is present in your in your, in your software,  or in your high tech component. So, each one has its role and  really it's the combination and how you use them together that has a beneficial effect. And the way that you're going to combine them  is going to be defined by your IP strategy that you will have to have done before you actually go on and execute on these different things. We're not talking about IP strategy in detail today, but it is a very important step that Canadian entrepreneurs need to really spend time and invest to really be able to get the most out of their innovations.

So, I'm going to present a case study and I'm  first case study and it's going to be something that I assume that many of  you have, if not all of you. And really, we're talking about your smartphone. And we're going to look at the different types of IP that can be applied and which ones. So here I've chosen smartphone that is by Apple. So it's the iPhone, which is  the trademark for that product.

So you've got trademark protection  in the form of the trademark Apple. You've got iPhone. You can also have audio trademarks that could be applied. In terms of copyright, you've got the actual software that we talked about, so it's really the software code, not the function, but the code, the user manuals, the ringtone is also protectable by copyright, as a work. Same thing with the startup  tones and the different images. If we move now to the other forms of protection. You've got patent protection on things like the

operating system that could be covered by patent protection. The behavior of the user interface so how, what's the user experience, the different ways in which, for example, you can open your phone by the slide bar, facial recognition algorithms and processes. And finally, the last form of protection that we want to illustrate here is the design. The design in terms of shape and design of the way that they present the GUI and the design of the icon. By combining these forms of protection, you  have multi layered protection on the product.

And similarly here, I have not presented that,  but on the patent side, you could also have all the apps and the functions of the apps  that could be covered by patent protection. The second case study I want to discuss  with the group today is a medium sized company who's developed image processing software. The name is Images 123, Inc. This is not a real company, but it's  really, really meant to illustrate the different ways in which you can approach protection for that. Images 123 has developed an AI based  nondestructive testing platform essentially what it does is it takes an X ray image, it has some AI based processing algorithms that are able to identify different types of objects in those X-ray images based on the density information that it can extract from the X-ray image.

By knowing that, it can identify, for example,  the presence of a tumor if it is a medical X-ray image, or the presence  of some threatening objects. For example, in a X-ray security application. They've also developed new GUIs that facilitate the operations of the tools, and they have adopted a brand called Athena trademarks in terms of for their security application. So this is the context that Images 123 has,

and so how do they go about protecting their software innovation? In the image that you see here, I've illustrated  the different layers of a software system. So typically you're going to have what we  refer to as core algorithms, so these would be really the AI technology, the AI algorithms  you could think of something that could be for example, positioned on the cloud where  you really have your hard core algorithms. Typically you would not be selling those to  the customer, but rather providing them for example as software as a service type license. And it's not easy to know how it's done, and so that's really your core that's there. For that kind of technology you can consider to the extent that you can keep it secret using trade secrets as a form of protection, and not to disclose those core algorithms. Again, this assumes that it cannot be reversed engineered and you're not giving access to that technology directly, but simply as a service that's remote. The second layer that's typical in a

software type system we really call the platform. So really what we're talking about here is how you're interacting between the hardware and the software. It's a level higher than the  algorithm, and the core algorithm. And typically you could, basically,  you can notice that it's being used. It's harder to design around, and so those  types of innovations tend to be good candidates for patent protection. The final layer is the one I refer to as the user interface and really has to do with the user experience.

So what the user sees? What's the interactions? Typically those change more often, although  it's very often there's core elements that remain, so for those you can consider patent  protection and you can also consider looking at design protection for example  for the GUI layout or others. So, this concludes my portion I'm going  to pass the control to my colleague. Thank you very much, Neena. Oh, thank you. Thank you Brigide, that was so incredibly interesting and very relevant in today's tech and innovation. I know there were a few questions that have been answered relating to AI and machine learning.

So thank you for that. So finally I will pass the floor onto Louis-Pierre Gravelle who will provide his perspectives on emerging technologies. What are they and why are they important? Louis? Thank you very much, Neena. and that's a great question. What is emerging technology and I think  if we look back at the examples that that both Louis and Brigide presented, at the time that  they came out, they might have been considered emerging technologies. So what is emerging tech and why does it deserve

special consideration when we start thinking about IP protection? I've posted on the slide an extract from a  table I saw, which is essentially someone going further into the future and looking at what are the 30 or so technologies of the next decade. And if you look at them, it probably is a little bit difficult to see on your screen, but we see things like artificial intelligence and the Internet of things,  collaborative technologies, advanced materials, wireless  power, proximity technology... all of these technologies are considered emerging because we are not used to already having them in our possession and using them or leveraging them in our day to day lives. So a short definition if you wish of what  emerging tech can be is that it's well brand spanking new science. So it is things that have not yet been

commercialized, it's cutting edge research. It's things that is being done in laboratories  or universities and it really is a new way of applying some knowledge  to things that we don't know yet. In some cases, new science can be old or older  science, but before it can become mainstream, so to speak, it requires advancements in other  technologies, and I think a great example of this is artificial intelligence. Those who have studied and looked at artificial intelligence and its development know that the roots of AI go back to the 1950s. But it took almost 50 or 60 years to get to  the point where we are at today because the computers themselves to be able to compute  and to crunch the large amounts of data that are required for AI systems to work, just  simply did not exist back in those days.

And so it is technology that was known, the  basic principles of artificial intelligence were known, they were sometimes extremely  refined, but we simply could not bring them to market because the other tools necessary  for those implementations did not yet exist. A third aspect which allows us to consider a  technology as being emerging tech is timing and often that will be quite relevant in a  variety of different of different fields. For example, and this has nothing to do  really with emerging technology, but the ubiquity of wheels on suitcases, for example,  is an idea that goes back to the 40s and the 50s. It took a gain 40 or 50 years for this to become mainstream, and this is a question really, mostly of timing rather than technology, because there were prototypes and there were actual suitcases equipped with wheels that were built and sold in the early 1950s. But the timing of the invention or the timing of the technology meant that it didn't really catch on until much, much later.

In order to get a better head of on what we  consider to be emerging technologies, I went to the magazine Scientific American and looked  at what they considered to be a list of the emerging technologies for the next few years. And some of the examples you'll see on the screen. Decarbonization is an emerging technology. We're talking about the environment, the ability for us to be able to remove carbon from the atmosphere and sequester it in some way. Another emerging technology is the  analysis of breath to diagnose disease. On-demand pharmaceutical manufacturer is  another budding field of technology as are spaced based technologies. And finally, one of my particular

areas of interest, which is quantum technologies. So not only the quantum computers themselves, these new types of computers that work on a completely different set of physical principles to arrive at a solution, but the use of quantum phenomena in sensors in transmitting light, et cetera. So those are the types of technologies that are considered to be emerging tech. So, what do they have in common that allows us to qualify them as emerging tech? And why is it important? I would suggest that the common thread in  all of these different examples is that they involve advances in different areas of science  such as chemistry or material science or data and analytics, engineering, sometimes physics,  mechanics, computer science, or sometimes a combination of all of these before they  can be brought to a commercial product or commercial use. So why does emerging tech then  deserve special consideration? I would suggest that it's not special as much  as putting more of a focus on some areas of emerging technology in order to be able to  appreciate the full potential of the technology. One of the aspects is that emerging tech often  lies at the intersection of many different fields, as I've alluded to a little bit earlier. In other cases, the science behind the technology

is at the cutting edge or sometimes what is referred to as the bleeding edge of the emerging field, so it's things that are very scientifically advanced and that is what requires sometimes a different appreciation for the IP dynamics underlying the technology. Another important aspect is especially when we  start thinking about cutting edge or bleeding edge technology is that there are different  commercial paths to widespread adoption. Perhaps the scientists who are working on  this technology have an idea as to how the technology could be brought to market. In some cases there is no immediate commercial value to the technology, and in other cases it simply is a question of picking the right path first to be able to get commercial traction on the invention to then explore some of the secondary or alternate ways to adopt the the technology. In cases where we're talking about emerging  tech, I think the other aspect that is extremely important is to make sure that you've identified  what the state of the art is, and that often involves some mapping using some specialized  software tools or at the very least an extremely close and detailed or intimate knowledge of  the state of the art and the area of technology that you are in. However, we also find out that one of the barriers or one of the issues or some of the issues that need to be considered when we're talking about emerging tech and IP, is that it often is an exercise in balancing many different competing priorities. The main priority of course is funding.

If we're in an area of technology where there  is a low or unclear path to commercialization, then perhaps funding is an obstacle to being  able to continue the work in that technology. Another priority which it is to be considered  is the breadth of protection and whether or not we're going to leverage patents more than  other forms of intellectual property in order to be able to secure IP assets on the technology  in order to be able to protect the R&D investment that goes into it. The R&D road map will also be a factor in in identifying what best path there is to protect intellectual property, as are the immediate, medium term, and long term commercial applications of the technology. In some cases, as we saw earlier, since emerging  technology really lies at the intersection of many different fields of existing technologies,  there may be an issue with respect to right to manufacture or right to use of technology  because a third party or someone else has pre-existing rights on the technology and  therefore there will be some discussion as to whether or not the rights need to be cleared  or we're going to wait a little bit until some of these rights expire before launching  a commercial embodiment of of the invention or the technology in particular.

In order to be able to give some examples  and to have our listeners reflect on some of the different strategies and the various  examples that we could find, I went out and looked at four companies that had some  in some cases some very aggressive patent strategy examples as they were starting  out in their emerging technology field. GoPro is one example where in fact the technology they were a little bit late in getting patent protection. They did originally file some patent protection on the way to attach a camera to a helmet. But they were sort of, I won't say lax, but  perhaps not as aggressive and continuing to secure patents in the development and the  commercial success that the company got and and so they there was an opening for competitors  to come in and start obtaining their own patent protection and try to compete with GoPro. Ultimately the success story behind GoPro is that they built a very, very loyal  following and so the IP strategy pivoted from a patent strategy originally, to a branding  strategy which is the ability for the company to have a following a number of people  who are very attached to the brand and to the story behind the brand that makes  it a very valuable IP asset today.

I won't really talk about SolarCity, although  we can certainly look up their, their different strategies because the company is defunct now. But I think Square is a company that really merits some analysis. As you may or may not know, square is a company  that was founded by the co-founder of Twitter Jack Dorsey back in 2009.

And knowing the IP world and  knowing the difficulty in launching a payment method that would decentralize essentially payments from these from these point of sale terminals that we see almost everywhere to allowing anyone with essentially a smartphone to be able to accept payment, required some thinking ahead of time. And just before the company was launched and  square the company had filed a series of patent applications on the same day ahead of the  launch so that they were, they planted their flag pole in the IP field very very quickly  and these patent applications, which were ultimately granted, covered the various  reader functions that we now see just about everywhere, which is that from decoding the  the swipe signals, the passive identification circuitry, the generation of receipts based on the information, and a number of others like that. And so, this is a company that started out  thinking they didn't know whether or not it was going to be a success, but they  certainly took all of the steps necessary to introduce and to protect themselves, before  launch, to ensure that if it did become a success, they would be they would be the the leaders from an IP perspective. Contrary to that, we look at the Uber portfolio  which, when they launched, Uber had very little consideration for patent protection, when  they, when they started operating but as the success of the company came and the popularity  of the services started to grow, Uber very, very tactically and very smartly  purchased a number of ridesharing patents from AT&T.

And that gave them access to a  significant patent portfolio. It was the equivalent of about 66 patents  and about 10 pending applications. And that gave them a very strong position  because they were able to secure some IP assets in in the name of patents that predated the  launch of Uber, but covered the activities that they were thinking of. And that... so that allowed them to strengthen

their IP position and also to be able to fend off some of the competitors. Of course we are not, you know, Uber is not free  from competition, there are other ridesharing services but there is a core of intellectual  property there that prevents an absolute copycat from doing the exactly the  same thing as Uber is doing. And of course the brand of  Uber is extremely strong. And so I think the various examples that  we've discussed here should be able to allow people to reflect on what might be the best  way or the best path forward when it comes to crafting an IP strategy or a patent  strategy when we are talking about emerging technologies as well as... you know, launching some commercial products. Thank you Neena. Thank you Louis-Pierre. Again, it's so relevant to innovative tech

and I really like the way that you explained how IP and protecting IP appropriately with the right strategies can actually serve to foster rather than hinder disruptive technology. So, again thanks. Thanks to our esteemed panelists for such an engaging session and to our audience for taking the time to attend this first of five webinars series. So today we covered the importance of protecting your IP. So if you haven't already done so, make sure you register for the next webinar in this series.

So, our session two will be held in  English on February 9th and in French on February 10th. And this is going to be focused on using IP in business, so we'll be talking about IP strategy. We talked a little bit about that today as well, with some insights from our IRAP colleagues, we'll also be talking to patent trademark agents on how to search for IP. And we'll also be having our guests from BDC on what to do to assess if your business idea is commercially viable as well as looking at the key elements of IP versus business value that investors look for. So, we have lots of fantastic tools  and resources and relevant links for this session, which can be found at the end of the presentation and these will be sent to all participants. I'd also encourage you to listen to

a new resource, the relatively new resource that we have in in our series of online resources. So our podcast series called  the Canadian IP Voices. This is and this is essentially interviews  with IP professionals and leaders in the space that provide creative solutions for real  problems that that occur in that IP landscape. So, I encourage you to take a listen,  we have a new one posted today. So again, thank you again to our excellent  colleagues and speakers from IPIC.

As you can see with the village where we're  here to help and if you'd like to reach out and ask any question, then please do not hesitate  to contact us using the email that's been provided on the on the slide and that  will also be included in the presentation. So, thanks again everyone, and  I wish you all a wonderful day.

2022-02-12 21:43

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