why intellectual property matters and how to maximize the ... ip... · 10 •ip administration...
TRANSCRIPT
Why intellectual
property matters and
how to maximize the
value of it!
Building a prosperous and innovative Canada
Indo-Canada Chamber of Commerce
Darlene CarreauDirector General,Business Services Branch
Feb 12, 2019
TODAY’S
DISCUSSION
2
• Why IP matters?
• Canadian Intellectual Property Office
(CIPO)
• Types of IP
• IP Strategy
• IP Commercialization
• CIPO Resources
AGENDA
There is a need for innovators to better
understand the IP process, making start-
ups and scale-ups more strategic about
IP… Compared to international peers, we need to do a better job about educating
our businesses to build IP literacy, and
build IP into their business plans.
Minister Bains, G&M (March 24, 2017)
INNOVATION AND IP
“”
3
WHY IP
MATTERS?
WHY IP MATTERS
4
• 4 times more likely to
export
• 2 times more likely to be
high-growth
• 27% more likely to seek
financing
• 27% of SMEs hold formal IP (2% patents, 9% trademarks,
and 1% ID)
IP use
• 78% of SMEs indicate that they are familiar with at least one
type of IP
IP awareness
• Of the 31% of companies that innovate, around half hold formal IP
Strategic use of IP
(Source: Survey on Financing and Growth of Small
and Medium Enterprises: Statistics Canada, 2017)
Small or medium-sized
enterprises (SMEs) that
hold formal IP
IP KNOWLEDGE GAP
WHY IP MATTERS
5
WHY SHOULD YOU CARE ABOUT IP?
It is a valuable business asset to:
Give you an edge over the competition
Help build a reputation and goodwill
with your partners and clients
You can use IP to:
Attract financing
Strategically achieve business goals
Secure your markets
WHY IP
MATTERS?
WHY IP MATTERS
INNOVATION, SCIENCE AND ECONOMIC
DEVELOPMENT CANADA (ISED)
Innovation and Skills Plan
2018 federal budget – New IP strategy
AccelerateSupport Help Promote
Canadian
innovators
Innovation through
superclusters
Innovation in key growth industries
Women entrepreneurs
grow their businesses
• IP awareness, education
and advice
• Strategic IP tools for growth
• IP legislation
6 CIPO
7
Examine and grant IP rights
Provide a quasi-judicial
function for trademarks and
patents
Raise awareness for the
effective use of IP
Share IP information to
support innovation
Represent CIPO
internationally to support
businesses operating globally
Through an enhanced IP
Awareness and Education
Program, with the goals that
Canadian innovators and
businesses be:
• more aware of the value
of IP
• better equipped to make
informed decisions about
their IP strategy
• increasingly seeking IP
protection
CIPO MANDATE
CIPO
WHAT IS IP?
Intellectual property (IP) is a creation of the mind.
TRADEMARK PATENT COPYRIGHTINDUSTRIAL
DESIGNTRADE
SECRET
A “sign” used to
differentiate your
products and
services from those
of other companies
For new, useful
inventions that
are not obvious
Original workOriginal visual
features of shape,
configuration,
pattern or
ornament as
applied to a
finished article
Confidential and
valuable business
information
8 TYPES OF IP
Plans and actions designed to maximize the
value of IP to achieving business objectives:
Take inventory of intangible assets and identify your commercial strengths;
Know the IP holdings and strategy of
your competitors.
Implement an IP Strategy to maximize the positive impacts of IP on revenue, competitiveness and reputation
Monitor & enforce your IP rights
9 IP STRATEGY
WHAT IS AN IP STRATEGY?
10
• IP Administration – Are you protecting your IP? Which IP
are you going to protect?
• IP Valuation – Are you coordinating/aligning your
strategy?
• IP Management – Are your rights layered out? Are you
leveraging your designs/rights? Do you have an IP
strategy and an IP portfolio? How do you
communicate it to your employees?
• IP Monitoring – Are you monitoring your rights?
• Enforcing IP – Are you making sure that you are
enforcing your rights?
IP STRATEGY
IP STRATEGY:
QUESTIONS TO ASK YOURSELF
11
• seek patent protection on technical aspects key to product base, ability to shut competitors out
Protect technical aspects
• seek trademark and/or copyright protection. This will help protect the value that is built through brand recognitionFocus on brand value
• aggressively enforce IP rights against competitorsFile protection for
offensive purposes
• rely on IP rights if competitors sue, provides freedom to operate and threat of countersuit
File protection for defensive purposes
• dependent on product, budget & sectorCombination of
IP rights
• put into the public domain (especially if there is rapid IP turnover); focus on first mover advantage, build brand loyalty and customer base
Do not file any IP protection
IP STRATEGY
POSSIBLE IP STRATEGIES
12
COMMERCIALIZING
YOUR IP TURNING INNOVATION INTO DOLLARS
So you’ve spent your hard earned
dollars and energy protecting your
invention or creation…
… but now what?
IP COMMERCIALIZATION
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WHAT IS IP COMMERCIALIZATION?
Turning your patents, trademarks, copyright, and/or
industrial designs into $$$ by:
• Selling your IP; OR
• Renting your IP
Not a “one-size-fits-all” journey
Lets you extract the full value out of your IP
IP COMMERCIALIZATION
• Assignment = transferring rights from one entity to another, usually in
the context of a sale
• Analogy: The sale and purchase of a home, is also an assignment
of property
• The assignor (seller) gives up ownership of the IP through the sale to
the assignee (buyer).
• Analogy: Home Purchaser = Assignee AND Home Vendor =
Assignor
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THE “ASSIGNMENT” PATHWAY
IP COMMERCIALIZATION
• Licensing = “partnering up” with another organization in order
to make money together from your IP
• Owner of the IP = “licensor”
• Whom the IP is licensed to = “licensee”
• Licensor rents their IP to the licensee for a price, but without
giving up ownership to the IP
15
THE “LICENSING” PATHWAY
IP COMMERCIALIZATION
• Exclusive Licence:
• Only one licensee has the right to use the IP. Not even the licensor can use
the IP after they’ve licensed it to the licensee
• Example:
• J.K. Rowling provided Warner Brothers Inc. with an exclusive
licence to the film rights to the Harry Potter novel series
• Non-Exclusive Licence:
• Licensor retains the right to work with the IP and grant additional licenses
to the IP to 3rd parties; licensee(s) can work with the IP as well
• Example:
• Purchasing a CD or online music gives you a non-exclusive
licence to listen to the musical work
• Sole Licence:
• Licensee can work with the IP, and so can the licensor, but precludes the
issuing of more licenses to 3rd parties
16
LICENSING: DIFFERENT KINDS OF
LICENCES
IP COMMERCIALIZATION
• IP valuation = estimating the value of your IP
• Some situations that call for an IP valuation include, but are
not limited to:
• The sale or licensing of IP;
o Applying for financing/loans;
o IP infringement case;
o Taxes; and
o Internal management of IP assets.
17
CRITICAL STEPS: IP VALUATION
IP COMMERCIALIZATION
Three common methods to IP valuation:
Cost approach
Market approach
Income or economic benefit approach
CRITICAL STEPS:
COMMON IP VALUATION METHODS
IP COMMERCIALIZATION18
19
Tools and information to
better acquire, manage
and leverage your IP assets
• IP Toolkit • Doing business abroad
guides• IP roadmaps• Business Development Bank
of Canada (BDC)-CIPO IP game
• BDC-CIPO IP strategy assessment tool
• Tech transfer toolkit (coming soon)
Suite of seminars and
training services for
businesses
• Seminars and webinars• IP boot camps • Search-a-thons• Case studies• Success stories• Custom training programs
Connect with IP experts to
answer your questions
• Contact the Client Service Centre for general IP information and guidance on the application process
• Connect with an IP advisor to receive help with understanding the value of your IP and guidance as you develop your IP strategy
Attend IP learning eventsAccess IP resources Speak with an IP expert
IP AWARENESS AND EDUCATION
PROGRAM
Focus on inclusive growth by targeting efforts to reach high-growth sectors, technology clusters, high-potential SMEs, key markets, women entrepreneurs, and Indigenous people
CIPO RESOURCES
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SPEAK WITH AN IP EXPERT
Connect with IP experts to answer your questions
IP ADVISORS CLIENTS
RYAN SHAUGHNESSYPacific region
MARNIE FYTENPrairies and Northern region
ALEXIS BLACKWaterloo region
DUMITRU OLARIUToronto region
CAROLINE LEFEBVRENational capital region
XAVIER GENESTQuebec region
CATHERINE VARDYAtlantic region
CIPO RESOURCES
CIPO
OPPORTUNITIES
21
IP awareness and education partnerships
• Over 25 partnerships and collaborations
across sectors (private sector, incubators,
accelerators, business associations,
academia, research, government, etc.)
• Partnerships include:
- Co-development and co-presentation
of IP products and services
(ie. IP success stories)
- Embedding of IP into existing programs
- Promotion of IP-strategic benefits to
businesses
FOSTERING PARTNERSHIPS
CIPO
OPPORTUNITIES
CIPO RESOURCES
22
HOW CIPO SUPPORTS INNOVATION
For IP tools, resources and information for
business, visit Canada.ca/ip-for-business.
For more information on going global with
your IP, visit Canada.ca/export-ip.
Find more programs and support for
Canadian businesses and innovators at
innovation.canada.ca.
CIPO
OPPORTUNITIES
CIPO RESOURCES
Contact CIPO
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• Canada.ca/intellectual property
• Client Service Centre
Phone: 1-866-997-1936
• In-person meetings by appointmentCanadian Intellectual Property Office
Place du Portage I
50 Victoria St., Room C-229
Gatineau, QC K1A 0C936
• IP Advisors and Partnerships
Joanna Baker – [email protected]
Find more programs and support for Canadian
businesses and innovators at Canada.ca/business
Other CIPO events: Search “CIPO calendar of events”
@CIPO_Canada CIPO