Intellectual Property and Working as a Patent Agent

Mathieu MironMcGill University

May 7th 2015

Summary

Bio & description of B&C

Short Summary of Intellectual Property

Working as a Patent Agent

TrainingAcademicB.Sc. Biochemistry (McGill University, 1995)Ph.D. Biochemistry(McGill University, 2003)Post Doc (Génome Québec, 2005)Patent Agent (Canada 2011 et USA 2012)

Work ExperienceGénome Québec (2005-2007)Bereskin & Parr (2007-2009)Benoît & Côté (since 2009)

Benoît & Côté 2 principal partners, from big Montréal

Law/IP firms; 1 junior partners; 7 other professionals 8 support staff Expertises : Patents in all areas of technology; Industrial designs; Trade marks; Plant breeder’s right; Licensing; No litigation, but participate in litigation

Intellectual PropertyPatents

Trade marks

Industrial designs

Copyrights

Plant breeder’s rights

Integrated circuits

Trade secrets and know-how

What is a patent?

It is a territorial right on an invention

Monopoly of 20 years as of the date of

filing of the application for patent

A negative right, to exclude other from

the invention

Types of patent applications

Provisional patent application

International patent application

Utility patent application

National phases

Principal Steps

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How to protect a business idea

IP must be aligned with the business

plan

IP is a commercialisation tool

IP is an asset of the company

How to patent an innovation ?

Is it patentable? Is it marketable?What is the goal of this idea? Who is the inventor? Who is the owner? What are the target markets? Is it know-how or a trade secret?

What you must know about IP before starting a business

Know the players and their position Knowing the state of the art Patentability (asset creation) Freedom to operate (avoid litigation) Possible Solutions

Novelty

Inventiveness (aka – non-obviousness)

Utility

Patentability

Product Wider than the product sold

A right to exclude others

Not a green light for sale

Freedom-to-operate

To determine whether your product maybe infringing the patents of others in agiven jurisdiction.Comparison of patent claims of others to

your product.Budget: $ 3K to $ 50K or more

Freedom-to-operate

product

Competitor C

Competitor B

Competitor A

The right to sell, manufacture, import and use a product, process or device.

Get a freedom to operate opinion before launching a product

Check the validity of troublesome claims

Purchase or license the troublesome patent

Purchase the product or device from the owner of the troublesome patent

Bypass the troublesome patent (design around)

Attack the troublesome patent (re-examination, court judgment of invalidity)

Solutions

Websites to visit

http://www.uspto.gov/ http://www.google.com/patents http://www.patentlens.net/ http://worldwide.espacenet.com/

Our visionTraditional IP and Law firms

Benoît & Côté

“Licensing-out”

Revenue creation

Business opportunities

“Cross licensing”

How to become a patent agent

Technical Training:Masters or DoctorateWork Experience

Interpersonal and communicationskills, analytical mind Legal training To be lucky and have good contacts Mentoring Pass the patent agent examination

What is a good patent agent?

Experience in business and IP Technical skills Trusted person Easy communication Prioritizes the needs of his clients Has an international network Passionate and dedicated to client

success

The work of a patent agent

Preparation of patent applications; Prior art searches; Validity or Infringement opinions; Freedom-to-operate opinions; Communication with the patent office; Communication with clients; Intermediary between the client and

the patent office

Benoît & Côté

What motivates me and keeps me

going!

What keeps me awake at night

Thank you!

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