all right everybody it is one minute after my name is sean casemore and i want to welcome you welcome you to our inaugural access the experts event this is the first in a five part series so we really appreciate you joining us here today and hopefully you'll continue to come back and enjoy these series there's going to be lots to come so watch our newsletter for more information on our access the experts event i'd also be remiss if i didn't mention that at engine understanding what's happening in the environment here we've actually created quite a few events that you can attend at no charge they're all complementary in our goal to really help everybody here to move their manufacturing businesses forward in these struggling and challenging times so uh this coming thursday we have another event that event is in our what's next thought leadership series and it's surviving the second wave it'll be thursday at 11 am you'll see registration information in our newsletter which goes out tomorrow i really hope you'll join us there as well now that said let me get started with a couple things for today's event today what we're going to be doing is if you have a question okay please use the chat box you'll see it along the bottom of your screen okay and you can simply type your question there i'm going to monitor those questions and i will ask them when we get to the the question and answer period if you accidentally use the q a box don't worry we'll manage that as well we've got it covered but if you could try to use the chat box we'll keep it to one area i will monitor and ask those questions when we get to the q a period so all that said let me get started here with a quick introduction intellectual property is really a valuable asset for any organization it sets you apart from your competition as many of you know just what is intellectual property and are you giving your ipv the attention it deserves that's really the question well today you're going to learn about identifying and protecting your ip peter milne a partner at gowling wlg canada is an intellectual property lawyer a professional engineer with a degree in materials a patent agent and a trade mark agent as well no small feats by any shape of the imagination rhonda she is the senior ip manager at engine canada and has over 15 years of in-house intellectual property management experience with global manufacturing organizations rhonda's is part of our engine group here and she is somebody that i've come to really recognize as an expert in this area as well so with all that said again i want to welcome everybody to today's session if you have questions please put them in the chat box and i will ask them at the appropriate time and with that said rhonda let me turn it over to you hi great uh good afternoon everybody um just welcome to our first access the expert ip series um so the goal of our series is really to raise the awareness of ip and hopefully provide some really good practical knowledge that you can apply to your organization intellectual property is all around you it impacts so many aspects of your business it affects the development of your new products it affects procurement it can affect the way you work with other organizations and it can be everything from your data your know-how your products your processes your business information your brand uh it's a huge asset and it could be it can really provide a competitive advantage and distinguish you over others but if it's someone else's it can also prevent you from doing something that you'd uh you'd like to do so the first in our series is really going to be a bit of a high level introduction to the way ip can be protected and what you can do at your organization to prevent the inadvertent loss of ip before you've actually had a chance to properly review it make a decision on what you would like to do with it and how you might want to protect it so as sean said during the presentation i encourage you to submit any questions you have into that chat box because we will be spending some time at the end of the presentation to answer as many of your questions as possible because this is access the expert so we're going to start first off with a few polls just to get a sense of um the background ip knowledge of everybody who's sort of um attending the seminar today so uh let's move to poll number one so does your company actively manage their ip perhaps you can take a minute to answer this and we'll post results once they're in right so uh pretty mixed across uh all the answers so um twenty four percent of you say yes a hundred percent of time some of you say most of the time which is great uh some of the time not really or rarely uh never and don't know it's a real mix across the way now we've got a second pulling question for you um does your company have a dedicated intellectual property resource frank perfect hopefully we'll see those results soon ah there we go ah so 19 have a full-time person or department 16 have someone who takes that on as their part-time role um some external contract people no wow almost 50 percent that know and some that don't know so that's also very interesting information thank you all for your responses now i'd like to um pass this over to my colleague peter who's going to talk a little bit more about formal protection of ip i all intellectual property is generated throughout organizations some of it is high value some of it's low value some of it's easy to protect some of it is more challenging to protect there are formal ways to protect intellectual property and that would be sort of patents trademarks copyright and there are also informal ways of protecting intellectual property and examples of that would be for example best practices within an organization having processes in place to protect and review ip and training excuse me and training to ensure that there's awareness of intellectual property 30 minutes is not a very long time to talk about a subject as broad as intellectual property and certainly not enough to give you a comprehensive guide to all things intellectual property but we will basically be spending some time focused on key things which hopefully will trigger you to take a look at the way that intellectual property is managed within your organization so we're going to start with the high level definition of the more formal ways of protecting intellectual property and the first one and probably the one that's the most powerful is patents and the reason i say probably the most powerful is that patents actually go beyond stopping people from copying directly what you're doing a well-drafted patent will protect sort of the underlying inventive concept and put you in a position where you can stop people from using the underlying inventive concept albeit not in exactly the same way as it was described in the patent a precautionary note patents are published 18 months after filing that means that anyone can determine what your technology is and what you're seeking to protect so if you have technology which is not reverse engineerable you might want to ask yourself whether you want to take the risk of making that technology become available by putting it in the patent application which is subsequently published and anybody can get access to it so if you're in a situation where maybe a manufacturing facility and you can control your trade secret and prevent people from getting to it that might be the best course of action under those circumstances um you know by way of example there is a you know famous soft drink brand which has a formula that nobody other than the manufacturer knows if they had patented that back in the early 1900s the patent would have been expired decades if not a century ago so keep that in mind when you're trying to make a decision with respect to the manner in which you're going to protect your invention peter i'd just like to add one example i've seen so uh one thing also to be careful about in addition to what peter sort of said is um since patents are first to file um sometimes it can be really important to make sure you move quickly if you are actually going to go forward with a patent especially if you're sort of working in a hot area i mean if you're working to solve a problem in your area that's you know to support your customers there's a good chance one of your competitors might be working to solve that same problem because patents don't publish for 18 months you have no idea what your competitors might have filed and in my experience i've actually seen situations where um two patents from two different competitors solving the same problem in pretty much almost the same way have been filed within less than a month of each other so it's just something to be cognizant of too is if you do make that decision and you don't want to wait too long peter well we'll take the next slide please trademarks about trademarks generally are something that links a product to its source and protects the reputation and goodwill of the owner um trademarks i'm not going to spend a lot of time talking about trademarks because my sense is that this particular presentation is more manufacturing directed than marketing and business development protected trademarks typically would be words logos um designs which you know a certain entity would own and that you know the use of that is in effect sort of a guarantee of quality to the purchaser of the goods the trademarks don't have to be registered but registering a trademark is actually worthwhile one of the reasons it's worthwhile is that you get canada-wide protection whereas if you have an unregistered trademark that would typically only give you protection in an area in which you can prove reputation and enforcement is easier with a registered trademark and just the process of applying for the trademark registration means that the case is going to become or become a go before trademark examiner the trademark examiner will at least search the trademarks register and you'll know that if you passed through the trademarks process that your mark is unlikely to be found confusing with at least a registered mark you wouldn't really help you with respect to whether your mark's confusing with an unregistered mark next please okay industrial designs industrial design protection protects the appearance of an article it doesn't extend to the functionality of the article in the way that a patent would um typical examples of industrial designs uh container shapes is one that is quite uh popular you know different brands of spirits will have every one of them will have their own particular bottle shape us same with soft drink manufacturers the old glass coca-cola bottle and the pepsi cola bottle would be examples and then there are other things which might not come to mind as readily the shape of confectionery is one that seems to be enjoying a pretty high uptick as far as a number of design applications being filed clothing shoes speakers earbuds and even the shape of an oreo thin is protected by industrial design registration industrial design registration is relatively easy to obtain and relatively inexpensive and relatively quick um well not as powerful as a patent and stopping people from you know copying your uh inventions if you will um they're good if you you know in situations where you're facing direct knockoffs which might be the case when you're dealing with counterfeit goods and the other benefit or thing that you could do with a industrial design there's a section of the trademarks regime which they're called distinguishing guises it's basically products in their packaging and you can ultimately protect the shape of your packaging an example of that would be say the coca-cola bottle the challenge though in doing that is you have to be able to prove that you have a reputation that you know in other words that the shape is well recognized by the consumer as far as being indicative of a particular manufacturer and what you can do with an industrial design is protect the shape for 10 years under industrial design protection and then you basically you know in that time you can market your product and will develop the reputation and ordinarily if an industrial design expires people are free to use that design but not if you then roll your industrial design protection into the distinguishing guys and then next well well done thank you um copyright basically extends to literary and artistic works um it's really a tool to prevent people from copying a copyright protects the expression and not the underlying idea so if you know you you read a story and you you know paraphrase it and reproduce it using different words without copying any passages from you know from the original text you're probably not in a situation where you're in french and copyright in a manufacturing industrial complex examples of things to which copyright might extend will be brochures uh company websites like the artwork on the websites uh computer programs uh plans blueprints drawings photographs uh models and you know you don't have to register copyright but you can it's relatively fast and expensive to do it the benefit of registering is that there's an assumption that you then do own the copyright so you don't have to if you want to take an action and copyright infringement you don't have to first prove that it's your copyright but you can always there's no deadline for when you can see copyright protection so you can always wait until you're in a situation where you want to enforce your copyright and then register it at that time thanks peter that's some really good advice um i've seen in my career um i witnessed you know entire websites or portions of websites completely lifted by organizations primarily you know a lot of foreign organizations to either sell very similar goods or make customers believe that they are dealing with the originating organization when it comes to those goods and i think this is where if you had something formally registered a trademark or copyright you might have a lot more ability to sort of shut some of that that stuff down a little easier i imagine with a stronger worded cease and desist or something along those lines it might carry a bit more weight you have something to threaten them with exactly otherwise you just upset that somebody's copying your stuff right so on next feeder so we've now covered these sort of uh you know the formal ways of protecting intellectual property from a manufacturing industrial perspective one needs to make sure that you avoid things happening that hamper your or lose your intellectual property rights and intellectual property can leave an organization in many ways um sailor promotion of your products you put your stuff out there people can see what it is and how it works employees can leave and they might have know-how with respect to not only how things are manufactured in your particular facility but also they might know what you're currently working on um dealing with suppliers um you know you have to in some circumstances basically if you're having somebody manufacture something for you they have to know how it works you know dealing with customers disclosing information to customers working on a new product you want to gauge what the market interest is in the product so you speak to your customers and in so doing if you're not careful you might just basically be giving away intellectual property rights cyber attack i guess would be a big one these days um the key thing is to make sure that you are aware of ways in which intellectual property can migrate out of your organization and to put measures in place to avoid that happening in so far as you can [Music] next please all right so we're off to our uh next polling question uh pulling question number three um does your company provide ip training for your employees you can take a minute to answer that and we can take a look at the results oh [Music] oh and here our results are out so um so most say you don't train your um employees you provide ip training for your employees and then some of you say you do with some of it's only specific departments or maybe only sometimes um it's great that sort of leads into the next part of our discussion around employees and i'll pass it off to peter or talk about agreements okay one of the ways when he when i provided that list of manners in which intellectual property can potentially leave your organization was with employees so the preventative measure to stop that from happening would be an employee agreement and employee agreements are important and they basically what they do is they will establish that the employer owns any intellectual property for that's developed by any of the employees and that's not necessarily just inventions that could be you know they're working in a creative capacity copyright rights for example um it's important that the employment agreement make it clear that upon departure and even not only just upon departure but in general that the employee is aware that they are obligated to keep any information that they encounter in the process of their employment confidential and the employment agreement should also make it clear that the employee has an obligation to assign any inventions or creations to the employer and if you want to take it a step further you could even provide in the agreement that you know the employee does hereby assign any rights and anything that they're going to develop and furthermore the employee grants the employer power of attorney so that the employer can sign any agreements evidencing the assignment of the invention and the reason you know that might sound a little draconian but the reason i say that is you get situations where an employee will leave their employment and not necessarily in the best of circumstances and under those circumstances sometimes you'll be you know you're having a disgruntled employee and they will refuse to sign anything or maybe your disgruntled employee you know uh moves to another country for his next or his or her next position um and then you're stuck because you want to file a patent application um and some jurisdictions require chain of title from the person who did the invention inventing to the person who's or the entity that's trying to apply for patent protection and if you have provisions of the nature that i just described in your employment agreement you have an out if you can't actually get the employee to to sign over the you know to sign an assignment form i mean the easiest thing always is to have an assignment it's like a page or too long and uh you know provides clarity but there are other mechanisms you know that you can use if you have a proper employment agreement in place employment agreements should be signed when you hire somebody because employment agreement is basically a contract that's between the employer and the employee it stipulates what the obligations of the employee are under the contract and what the obligations of an employer are if you have an employee agreement or if you don't have one or if you have one which is somehow deficient with respect to intellectual property matters you're there's a challenge in trying to remedy that because for a contract to be valid there has to be consideration under the contract um that's the legal term you know applies in contract law but you basically have to you know something has to be exchanged as part of the bargain that you're striking and normally with an employment agreement the consideration is that you're getting a job but if you've already got the job what's the consideration for any further agreement relating to that job and so under those circumstances you might want to contact an employment lawyer and discuss what the best way would be in order to give that you know more robust employment terms some sense of validity or enforceability next please so now i'm going to talk a little bit about best practices and employee training um so employees should have some kind of training around what's okay to share and what's not okay to share outside an organization because most employees don't want to inadvertently um share confidential information outside um for example you know are are they sharing highly detailed design drawings or maybe the company has a more simplified version that should be provided instead and maybe that employee should be trained in sort of the aspects of what is okay to go out and provide it with some tools to allow them to understand that for example also too do employees prepare some custom presentations for external use you know this is another opportunity for things to get shared outside it might be more useful instead to have some approved standard company marketing presentations that employees are allowed to use rather than have anybody creating their own or i mean if that doesn't make sense for your business because maybe it doesn't um maybe you have at least a review process or something in place where somebody else in the organization seconds eye second eyes what they are planning on sharing just so you can make sure that something doesn't go out that you didn't intend because you know all content that goes outside the organization should be vetted content as well as timing of the release not to mention it should you should also take a look to make sure that the company's trademarks and branding are being consistently and used and properly marked your trademark becomes stronger if you consistently market and use it properly in regards to all of your outward facing branding they should also be trained in some basic iep principles and i mean the r d group um probably should get extra training but i think everybody within the organization should have at least some basic ip training around principles so that they can maybe recognize when there's potential new ip being created and then some kind of idea or notion is to how they could get this reviewed in the organization what steps they should go through maybe who they should talk to some kind of process or policies in place just so they know what to do maybe there's a way to submit it maybe there's somebody to submit it to or maybe they just talk to their manager they should also have some sense of when they may need an nda with an outside organization or joint development agreement do they know when they need to reach out to senior management perhaps and say hey i think i really you know we're headed down a path of you know doing a lot of talking and maybe we need to get a development agreement put in place because public disclosure of any new inventions can really prevent you from being able to file patent and too much detail on information shared outside your organization can give away some proprietary information but with little return for the organization um one one thing i've seen sometimes is in in comedy brochures i see very detailed cross-sectional drawings of their products um and i mean realistically a lot of customers aren't necessarily that interested in seeing that level of detail but it really is great for your competitors to see exactly what you're doing instead almost provide something more helpful for them so it's really good to put some thought into do we actually need to provide this information or not and make sure the decision is made that way so we're on to our next polling question which is do you review your company's r d and new product development projects for new iep if you could take a minute to answer that and we'll share the results like we have with the other ones maybe i'll let peter talk about the results a little bit because it leads right into his whole section on research and development and product development wow 47 sometimes um 22 yes i guess that's you know not necessarily unexpected um but hopefully by the time we finish our presentation some of the sometimes this will become all times is research and development and product development so challenge when you're dealing with creative people is that they like to talk about stuff they like to bounce ideas off of each other they like to brag about what they've come up with or you know share creative solutions to problems um that's all great except that uh intellectual property protection in the form of trade secrets know-how confidential information actually require that the information be kept secret um and when you're getting into patenting the most jurisdictions require that you file for a patent application before the invention becomes the technical term is available to the public and available to the public can be anything from showing it in the trade show describing it in a brochure selling product um you know writing a printed publication in a trade magazine discussing a new process for example and so your people have to be aware that you know that stuff has to be kept a trade secret until you you know make a decision that you don't want to take any formal steps to protect it because ultimately you know patents are expensive and you can't patent everything so you want to use your money wisely and look for return on investment or some strategic value to your decision to whether or not to file a patent application um so if you're in a situation where you need to have a conversation with an outside organization um best practices would be to file a provisional application a provisional application is kind of a simple version of a patent application which it doesn't actually become a patent but you can rely on its filing date as the filing date of any subsequently filed application if you file within a year um provisional patent doesn't get published if you don't well it will it doesn't get published it's available to the public if you rely on it in a subsequent application but if you decide in the end not to go ahead with patent protection your provisional dies a natural death and it's kept confidential and nobody can come and see it if you can't do you know if you're not committed enough to go for a provisional patent uh next best would be confidentiality agreement or what they sometimes refer to as a non-disclosure agreement it's basically an agreement between two parties that they're going to exchange information and both parties agree to hold that information and confidence and the value of that is if you disclose under a confidentiality agreement that doesn't make the what's being disclosed available to the public unless somebody reaches the agreement but then that's sort of the weak point of any confidentiality agreement you have to trust the people that you're signing the agreement with and so if you're protecting your you know if you're discussing possible ways of manufacturing or trying to gauge whether a client has you know interest so you can decide whether you want to invest anymore developing a particular product or process confidentiality slash non-disclosure agreement is certainly one way to go [Music] um just one more thing i wanted to say about that or a couple of things before we get off that last slide sorry um and i think uh ron already touched on this um without reiterated anyways engineering and research departments of a corporation are typically where intellectual property is created and you really should have robust procedures in place to keep an eye on what's being developed and can you know consider whether or not at certain stages in the development process it's time to start taking patent protection because once you put your product out into the marketplace it's too late so these are decisions you need to make in an ongoing basis during the development process it's a good idea to have a robust invention disclosure form and the format that you typically follow would be not unlike the way that a patent is set up this is you know this is the world before my invention this is what i've invented these are the advantages to my invention um this is how my invention may be applied this is how it might be practiced and also the the form should identify whoever participated in that particular product or process development and as you know as soon as you make a decision to go ahead with formal protection get the assignments then because three years later you know when you're trying to enter you know a patent application in a foreign jurisdiction and you need an assignment the inventors might no longer be available so it's typically a good idea to get that taken care of you know as soon as possible so you don't end up having to rely on some provisions in your employment agreement assuming your employment agreement actually has those provisions in it [Music] um what is an invention um and you know because if we're going to assess you know r d and should we go ahead and patent it i guess probably would warrant making a couple of comments on what types of things are patentable an invention is fundamentally a solution to a problem and the basic criteria for patentability the first one would be subject matter so patents are available for compositions of matter processes tools machines software in some cases but you know they wouldn't be available for artistic works or abstract theorems you know you can't patent a trademark um you know and it's doing what i do you often read and use papers and stuff people want to copyright an invention and patent the trademark and stuff but you know i can appreciate that because they're all it's not totally incorrect you're trying to protect your intellectual property just haven't categorized it properly um the other thing to keep in mind okay so you've got subject matter number two is novelty it has to be new nobody has done that before has to be different than what's been done before and the third one is inventiveness so the difference can't be insignificant like you know replacing a screw with a nail or a nail with a screw is unlikely to be invented because you're replacing one common fastener with another common fastener um and so you know there has to be if there's an advantage to your solution that didn't exist in what we refer to as the prior art that's a pretty good indication that you should take a deeper look and dig down a little deeper with respect to whether or not you should be considering protecting it and the last thing i'm going to comment is that most patents are improvement patents so you know it pioneering inventions yeah they they occur but usually what you've done is nudge some technology along a little bit and as a result what you have is better um you know your process works faster your material is 10 stronger or it's more flexible you know that sort of thing and so you know sometimes relatively what initially appear relatively insignificant from a technological standpoint improvements actually could have huge market value and that's you know you don't gauge whether something's patentable on you know how much different it is it's really a question of you know what kind of advantages are realized and are those advantages commercially valuable [Music] next please [Music] i touched on this earlier once once your product is in the marketplace uh it's available to anybody who wants to purchase it um and you're subject to somebody taking your product and trying to reverse engineer it and copy it unless you have some type of uh formal protection in place with respect to your product say a patent for example there's absolutely nothing wrong with reverse engineering and so you know you want to make sure that before you put that product in the marketplace that you've already made the decision whether or not that's really an acceptable risk to the business that has developed that new product or process so i could spend this entire talk on joint ownership issues and collaboration and joint development agreements there's a lot of stuff to cover um but what i'm going to do is spend some time and just outline the topic to make sure that you're aware of its importance and that you you know consider taking timely steps with respect to uh i guess basically disclosing information and joint development by way of collaboration so you know if you guys are dealing with engine i mean collaboration is the name of the game that's what that's what engine is you know largely there for and on occasion you know an engine would be one example of it you're gonna have different entities that might want to combine their individual skills in order to develop new product and while that might be uh an effective approach from an engineering standpoint it does present a myriad of challenges with respect to the intellectual property assets however if you have some upfront planning and understanding of the risks these challenges can be well managed so before you do any joint development any collaboration the entity should enter into a joint development agreement and the agreement would basically determine how intellectual property uh assets are going to be dealt with so for example um what rights does each party to the agreement have with respect to the intellectual property of the other party uh how are you going to uh share ownership or are you going to share ownership of anything that's developed during the collaboration uh post-collaboration what are the respective rights of the parties with respect to anything that was developed and with respect to the intellectual property of the other party that might actually be necessary to practice what was jointly developed um what are the rights of the parties to assign their interest can i assign my interest to one of your competitors um or you know would i need your permission in order to be able to do so um [Music] and yeah so you know basically what i'm trying to come across and say is that you know when you're going to collaborate this stuff can all be handled just make sure you figure out at the outset because otherwise people will make assumptions and sometimes those assumptions aren't shared by all of the parties to the collaboration and one other thing to keep in mind is you know if you're going to be applying for a patent let's say both parties want to have joint ownership and that's that's another can of worms right there um the you're going to be prosecuting one application through one agent so that's easy if both parties can agree on the steps you know of the process but if it turns out that one of the parties disagrees with the other party the agent needs to know which uh which party has the final say with respect to instructing the agent okay and just one thing i'd like to add a little bit is so as the senior i.p manager at engine part of my role is to assist the project applicants and project participants in in making sure that they have put together a good ip strategy where they sort of fought a lot of these things through um and then in turn help them uh would make sure that their collaboration agreements uh sort of are in line with their ip strategies um and and in the end you know we have had many engine projects now that are contracted and they've all successfully managed to put together good ip strategies and collaboration agreements that suit their project and really provide excellent collaboration and also help the organizations protect the future commercialization uh commercialization activities that both parties are trying to achieve so it's it's it's actually been really nice working with all these different groups and helping them through some of these challenges so we have another polling question at this time um so our fifth polling question is do you feel that you know what the difference is between a trade secret and confidential information and again i'll let peter review these results with you because it'll lead right into his next section okay yeah i'm kind of somewhere in the sort of and no category myself um [Music] rhonda posed that question and it was an interesting one it sort of made me think because i normally think of any of this stuff sort of generally under the heading of you know confidential information but if i had to define a difference between trait secret and confidential information i think what i would say is that they both involve confidentiality you're trying to keep information from you know being dispersed but one is unlikely to share a trade secret even in confidence i think that would be my my way of putting it so let's you know launch into trade secrets i think this is our last topic actually um trade secret protection is of no value if your product can be reverse engineered so if you have something that isn't reverse engineerable you're looking at patent or industrial design or some other kind of protection but certainly not trade secret now a product or process isn't reverse engineerable um trade secret protection may be a good approach um you know and the kinds of things that as far as i know were trade secrets would be you know the formula for coca-cola and the mixture of herbs and spices in what used to be called kentucky fried chicken but i believe it's kfc now [Music] the thing to bear in mind is that and certainly when you're dealing in like a manufacturing or development environment is if you stamp every document that you have confidential the documents are all the same so if the court were to look at that they go well you know everything can't be a trade secret and everything can't be confidential and so ultimately what you need to do is pick out the stuff that you really want to protect and protect it you know in a relatively formal manner you want to make sure that it's kept in a secure location controlled access need to know basis uh maybe even have a log so anybody that accesses the information uh has to you know sign in and so that you know uh who has uh had access to your trade secrets yeah so oh sorry go on peter i think that's pretty well all i'm going to say you had some very interesting examples that you were going to share with us yeah so in in terms of my experience uh sort of out on the machine shop floor the factory floor you know i've seen companies restrict access to a particular area you know to even go to the point of having locked doors but some of them even have just put up curtains around certain areas to make sure that you know if they're ever running a plant tour for anybody they don't walk by an area that you know where you might be able to see a trade secret process uh happening i've also seen uh locking out access to controls on particular pieces of equipment uh to prevent people from all the you know to prevent all the employees from being able to access sort of the background process stats for example you know the times and temperatures used in a curing or metal treating process it can also be white labeling containers that have come in um you know in order to prevent prevent people from in the facility from just being able to know what ingredients go into a particular recipe or formulation so that's sort of you know more the level you might need to go to in order to really do a good job of protecting your trade secret because once it's out the door you've sort of lost your trade secret even if it left in a not so proper way it wasn't an accidental leak maybe if it was even you know somebody sort of took it from your organization and but once it's out there it's sort of out there and you've lost that edge so the next slide we have is um sort of just a summary we're sort of at the end of our presentation some of the things i just like to reiterate is you know you might want to look at some of your company policies your employee training maybe some of the review processes you have take a look at the things you actually consider your trade secrets and are you really doing as much as you could do in order to sort of protect them from either leaving or being discovered and then here's a few resources of really good information that's credible information that you may be able to use it's also there are also free resources um some ip training um the canadian intellectual property office depot has a real good section on education and other resources that are available um include videos there's even i think you know some template documents and different things like how to put together invention disclosures um they also have a youtube channel with other videos as well and then gowling our partner here in in our presentation um also has some articles and different resources that are available on their website as well and also obviously very credible source of information for you to use so now i'd like to just pass this back to sean or and see who's going to take us into our question period great thanks rhonda just to confirm you can hear me okay i always want to make sure that great so uh again it was peter milne with gowling and ron o'keefe our senior ip manager at engen some great insights so just before we jump into q a i have been tracking and luckily you've put them in both chat and q and a so keeping me on my toes which is great um so just before we jump in i want to mention there is going to be one more polling question at the end of the q a and that is really going to help us design the next uh session if you will for you so please stick around for that question uh we'll try and do our best to get this wrapped up top of the hour but if we get too deep into it we may go a few minutes past but try and stick around for that question uh so we can make sure we design these uh to meet your needs so to jump in uh what i'm gonna do i'm gonna kind of start with uh michael alond posted the first question and i'll just read these so here's what michael said what i've learned through a recent patent process is that no matter how clear a patent may be it does not prevent anyone from challenging it and the onus is on you to prove an infringement or if it's challenged prove it is valid how can a sme protect itself from large multinationals that have reputations of predatory practices and litigation right peter that's a question that gets asked a lot i had a u.s colleague once that said that uh patent litigation is the sport of kings um that that that's that is a problem i mean you need to be careful and make sure you're not treading on anybody's intellectual property uh what is the reality you know can you realistically you know sue a major multinational for patent infringement patent infringement actions go on for years and you know the cost to do it is in seven figures maybe higher um so you know that that's it that's that's you know it's a good question and that's really one of the challenges to the patent system um you know there are entities now and this didn't exist in the past who will actually take on a patent litigation suit on a contingency basis so that that might be one option if you don't have deep enough pockets to finance your own enforcement activities i mean one thing that i would say too i mean if you are going to take the time to file a patent and you do think it has value i really spent some good time doing a really good prior art search before you even head down that path if especially if you're conscious about you're not the kind of organization that's going to pepper everything with patents and you can't afford to file you know huge portfolio patents and the ones you do have are really important to you and your technology is really important is take this step and maybe spend a bit of time doing a priority so you know how valid or how good your patent might be before you even file it um so you don't waste money on patents that you know really aren't going to go anywhere and the prior art search might also locate art that you need to be worried about with respect to you know inadvertently infringing you weren't aware of it um prior art search is not really a substitute for freedom to operate because freedom to operate is going to go a lot broader the prior art search is kind of going to be focusing on you know closely related technology and not sort of other aspects more for validity yeah more for validity of your patent and the patentability but yes definitely freedom to operate to stop yourself from infringing of course yeah okay so the next question and rhonda if you're we might have lost that last screen you head up there if you want to put that back up um so this is uh jillian i believe uh if you have a company name can you copyright or patent that especially if your product is known as that and the competitors use it for example coca-cola pepsi etc okay the way to protect your product name is through the trademark regime that you know the one thing you want to be careful of is a business name registration is not a trademark registration these these are two separate regimes and they exist for different purposes now if you use your business's name on your product and you develop goodwill and reputation then you would have what we would refer to as unregistered trademark or more technically correct would be uh common law trademark um copyright might enter into it like if you have an interesting design or logo um you know there's that's an artistic work and so you can protect that sort of through the copyright regime there is overlap here there's you know there are things where you could actually have patents copyrights trademarks and industrial design uh on the same article and the example i'll give and i keep coming back to this one is your coke bottle your shape is an industrial design originally it's probably distinguishing guys now you've got coca-cola in the script and there's probably patentable technology with respect to making the bottle and filling bottle [Music] great all right and next question we have is from ann she said our small business collaborators do not actively manage their ip pointing to the problem of getting a reasonable return on commercialization they're more likely to give up ip in return for a partnership or a vendor relationship with a large firm that can develop or open markets for the technology more quickly as part of the supply chain in order to use the returns to grow their business what advice do you have for companies in such a position well the question kind of answers itself the uh you know um if you have technology you think somebody might be interested in it you got to go hunting around for whoever might be interested in it and then you enter into the discussions as to you know what is the interest how are you going to share the technology yeah i think the thing is to also to you know consider i think it's a difficult i think decision for any organization when it comes to companies wanting to own your intellectual property or your or have exclusive rights to your technology i mean it may help you grow but at the same time it could maybe potentially hurt you in terms of other opportunities um down the road with you know sort of exploiting your technology outside of that one customer so i mean it's really if that's a difficult um decision i've heard even i've heard you know people in the music industry talk about you know owning their own songs and how that's you know helped or hurt them inter in the long road um i just watched actually a documentary on dolly parton where she she actually kept the you know her big song that whitney houston eventually did she refused to give it to elvis and that was probably one of the biggest business decisions or best business decisions she said she ever made was keeping ownership of that song so i it's i think it's a it's a tough decision for any company to make that's funny rhonda i just watched that exact thing on netflix the other night okay then the next one and sorry i don't have your name as an email address and considering collaboration with academic institutions do you have any recommendations as to how to construct the ip term sheet such that there's no impediment to commercialization of technologies resulting from the collaboration itself i might put that one over to rhonda uh yeah i mean i i've been in a situation i've worked for an organization that has done some academic work um and what we um did was we sort of parsed it out we sort of looked at um you know in our markets in our areas you know that the the organization would own the ip as it related to the sort of application side of things in terms of you know we own the ip in this particular market area but that the academic institution sort of owned it more at like the fundamental level um that you know wasn't going to hamper the commercialization activities of the of the company and they could then work with other organizations that weren't competitive to um the manufacturing company and maybe develop solutions for other non-competitive uses using that that same ip but for areas that weren't going to cannibalize the business of the the company doing the work with the academic institution okay down that path all right next question is from andrew is there a risk to securing ip as a trade secret and having a competitor patenting the same ip yes definitely that's the risk and i sort of i've seen it before i've seen same solutions coming up at the same time you know when we've looked at we've done prior searches and and lo and behold our our competitive company has within 30 days of us come up with the exact same solution luckily we were first but then i've also been on the losing end of that as well so i mean trade secrets the same could hold true for that as well they could be working on the exact same problem solution so this risk either okay all right the next one's from i think it's cara cara excuse me if i mispronounce that how is this affordable for pre-revenue startups and i assume she means the whole licensing of ip oh the registration of ip um maybe peter you could talk a little bit about there are strategies to try and keep your costs down a bit you can stall you know getting patent protection is relatively expensive and if you're looking at a global portfolio yeah you're you know hundreds of thousands of dollars the what you can do is you know work on it incrementally so your first thing you do is you file a provisional application and that buys you your first year and you haven't spent a lot of money at that stage and then you need to make a decision are you going to go ahead or not so you know you're a year down the road and hopefully you know you've got some some revenue or at least you're generating interest that people might want to invest in your particular startup and then you know if you make a decision you know are you going to file in just north america in which case that might be the step at which you file canadian and u.s patent applications excuse me if you still want to keep your foot in the door longer then you file a application under the patent cooperation treaty the patent cooperation treaty is basically uh it's you know it's it's a foot in the door for another 18 or so months yeah it's talking like a placeholder it's a placeholder it's like it's like you're buying an option to maybe file patent applications in the future and so with the pct process you can stretch this whole thing out to 30 31 months but by then you have to you know really be in a position and have some finances in order to um go after uh protection in different jurisdictions great all right so ben has posted a i think a comment and a question i'll read something we've noticed in our experience with filing and winning our patent is that law firms who specialize in patent law tend to move slowly and incrementally making small changes and taking feedback from the patent office until we get it just right this iterative process is very costly for a startup this is a common workflow but really is better suited for big corporations that can afford the legal costs in our case for instance in the end we ended up making all the changes we wanted to make at once because we were burning through our budget against the recommendations of our lawyers but we knew it would work and it did how do we avoid this along process in the future is it just a matter of putting our foot down so to speak i think well so i think every patent agent is going to try and get the broadest possible protection they can and i think that's probably why they're often reluctant to give up more than they need to in an office action because it might not serve you so well however if you look at the recommendations and you work with them and understand what what you're trying to achieve with your patent you really consider the limitations that you have as options um and if some of them you know in your mind aren't that restrictive and you know you could have that conversation like you did with your pad agent but i think i don't know correctly if i'm wrong peter but that would be the reason they're they're really taking those incremental steps towards they don't want to give up more than they have to well i guess as you know dealing in any relationship communication is important you know your patent professional has to sort of be in tune with what you're hoping to accomplish with the patent process the patent process is slow and it's not the patent agent that makes it slow for the most part it's the patent office you file an application for a patent in canada you may or may not request examination at the time of filing but you request examination and then it's maybe two months before you receive any correspondence from the patent office and then you know you review it you make recommendations and you know basically uh send the your comments and recommendations to your clients you know some clients will give you instructions in two weeks some of them you're chasing them six months down the road so sometimes the delay is at that end and you know once we receive instructions we tend to file a response relatively quickly but then that could wait another six or eight months in the patent office before patent examiner takes a look at it again and you know every every one of these steps takes time and there's an expense associated with it and i don't really you know there are ways of speeding things up let's say for example you're successful and you file a pct and you have a favorable what they call the international preliminary examination report um or you have success in a jurisdiction that moves a little faster and i would say you know us is probably a bit faster than canada as long as the case goes easily through the system and that there's a mechanism now called the patent prosecution highway you can take your favorable cir results in another jurisdiction and apply to different patent offices in canada canadian intellectual property office and uh you know and you amend so you canadian case now looks like the one that you were successful in and you request that you expedited prosecution uh pph case you could probably get through the system in four to six months yeah that can work pretty quickly i also think uh that sort of going back to the prior art searching and really understanding a little bit what like what your patentability is helps you understand where to go a little quicker too and maybe could prevent some of this if you really have a really good understanding of what's new in your invention and you're not sorry it's not like a shot in the dark so that understanding of the prior and feeling like you've done a really good search and you know what you're asking for you know what you deserve with the patent office helps up front too okay and then the last question and i'm gonna i'm gonna paraphrase it a little bit there's a few questions in one here so the question is from david and specifically he's referencing the differences between canada and the u.s but his question is can knock off imports and i think he means out of out of north america be blocked by cbsa or blocked in other ways and kind of tied to that same question can a manufacturer go after the buyer or local seller of the counterfeit fit or infringing goods well the u.s does have like i think cbsa is that customs cbsa is the canadian version yeah it's itc i think isn't it or is that yes yes there are mechanisms to do that you know i'm not a uh i'm not on the enforcement side but uh yes uh certainly i know they can be quite powerful particularly in the us register your your design or your trade your trademark with them and they will actually you know form their own opinion and i think there's an issue you get notified and that does get blocked and canada's i mean if they have yet or is in the process of introducing similar procedures um as part of the sort of amendment to our uh intellectual property laws a couple years ago um which is last year at this time actually october 30th of last year to be more compliant with uh treaty obligations in other jurisdictions and that was one of the things that was part of that part of those revisions uh going to china tracking and prosecuting um that would be challenging because china's not exactly famous for uh you know honoring intellectual property rights they're getting better i mean 20 years ago i would have said no way i think i mean now we have an office in china and you know i'm sure they could help you know if there's a situation like that because that's not often the way that uh that it's done i mean you don't typically apply for a chinese patent to stop chinese knockoffs and the thing is if you don't have formal intellectual property rights in china you're not going to stop any right you have to have that patent or trademark or whatever and you know given the enforcement challenges the question of do you want to get that chinese patent but when you have a patent in other countries say canada or the u.s that stops people from making using itself those those are the three rights that you get with your patent and included with that is importation you know just because it was made in china it doesn't mean you can use and sell it in canada [Music] great thank you very much peter so once again i want to thank peter milne and rondo key for joining us here today as promised we're going to put up on your screen the final polling question your responses to this are greatly appreciated and going to help us frame or set up our future events for you and as you're doing that i just want to mention briefly as well that as alluded to earlier we have another event coming up this thursday in our what's next thought leadership series at 11 a.m eastern standard time please watch your newsletter on wednesday from ngen if you'd like to sign up for that also as i mentioned in the chat earlier we're going to send out a copy of the uh the slides and a link to the recording to everybody who attended here today so you'll be able to reference back to that and if you'd like to see future events make sure you watch that event tab on our website for updates all right frank what do we have here for responses from our final polling question of today i feel like there should be a drum roll here and as i mentioned earlier just if you keep an eye on your upcoming newsletter you're going to see future events you can attend okay here is the polling results what topics are of most interest to you for future access the experts intellectual property webinars so we got about 26 how to put together an ip strategy i got a few responses uh collaboration agreement is uh had 16 percent i'm just going to hit the highlights obviously how to work with a patent agent attorney tips for dealing with outside counsel was 21 and then we had several here down at around 11 10 or 11 percent so we're going to take the results of the survey and use this to design our next access the experts intellectual property webinar series and with that again i want to thank you peter mill for joining us today as well as rhonda o'keefe for joining us it's been great having you here hope you our attendees have gotten some value from today as always feel free to reach out to us here at engine if you have any questions or comments on how we can continue to make these events as valuable for you as possible and i'm just going to ask rhonda anything to add or are we good to sign off for the day great all right well thanks again peter and thanks again rhonda thanks again for everybody for joining us have a great rest of your day