Inaugural Access the Experts Event: Intellectual Property

Welcome and Introduction

Presenter: Sean Casemore
This event is part of a five-part series created to help manufacturing businesses move forward during challenging times.
Upcoming Event:
- "Surviving the Second Wave"
- Part of the "What's Next Thought Leadership" series.
- Scheduled for Thursday at 11 AM.
During the Event:
- Use the chat box for questions.
- Q&A will be handled by Sean.

Importance of IP:
- Valuable asset that sets organizations apart from competitors.
- Involves patents, trade secrets, trademarks, copyrights, etc.
- Impacts product development, procurement, business branding, and competitive advantage.
- Protecting IP prevent unintended losses.

Peter Milne: Intellectual property lawyer, professional engineer, patent and trademark agent.
Rhonda: Senior IP Manager at Engen with over 15 years of experience in IP management in global manufacturing organizations.

Formal Protection:
- Patents: Protect underlying inventive concepts beyond exact replication.
  - Published 18 months after filing, revealing technology details to the public.
  - Weigh trade secret vs. patent for non-reverse-engineerable technology.
- Trademarks: Protects logos, designs, and guarantees quality.
  - Worth registering for easier enforcement and Canada-wide protection.
- Industrial Designs: Protects the visual appearance of products, not functionality.
  - Examples include container shapes, clothing, and confectionery shapes.
- Copyrights: Protects literary and artistic works, blueprints, software, etc.
  - Registration makes enforcement easier, though not mandatory.

Employee Contributions: Ensure employee agreements include IP clauses on confidentiality and assignment of rights.
- Important to handle upon hiring to ensure enforceability.
Best Practices for Employee Training: Employees should know what's okay to share and understand IP principles.
- Standardize presentations for external use and establish review processes.
R&D and Product Development: Ensure no public disclosure before patent application.
- Consider filing provisional applications or using confidentiality agreements.
- Regularly review projects for potential IP.

Criteria for Patentability:
- Subject Matter: Must be compositions of matter, processes, tools, etc.
- Novelty: Must be new and different from existing solutions.
- Inventiveness: Must provide significant advantages.
Patenting Strategy: Consider economic feasibility and ROI.
- Precoordinate internally before disclosing in public or third-party settings.

Key Points:
- Set clear terms on IP rights and ownership before starting collaboration.
- Important to preempt conflict and ensure mutual understanding among collaborators.
Handling IP in Collaboration:
- Ensure alignment in goals and understand IP needs for successful partnerships.

Securing Trade Secrets: Only viable if not reverse-engineerable.
- Require high levels of control and security.
Examples I’ve Seen:
- Restricted access areas, white-labeled ingredients, and control systems.

Actions to Consider:
- Review company policies on IP.
- Conduct IP training for employees.
- Assess trade secret protection methods.
Additional Resources:
- Canadian Intellectual Property Office, Gowling WLG resources.
Keep watch on newsletters for future events.

Common Issues Discussed:
- Protecting against large multinationals with predatory practices.
- Validity of patents vs. freedom to operate searches.
- Affordable IP protection strategies for startups.
- Collaboration agreements with academic institutions.
- Risks and strategies in managing trade secrets.
Recommendations: Early and detailed IP searches, considering licensing, drafting comprehensive collaboration agreements, and employing phased patent filing strategies (e.g., PCT applications).