Intellectual Property
Case Study
Why IP Should Matter to You
CREATE training program in Climate Science (TPCS)
StFX Industry Liaison Office
Andrew Kendall
CIPO Case Study
• Who I am (and what I do)
• Intellectual Property (and why it really matters)
• Case Study
University Inventions
Canadian University Inventions
What is intellectual property?
• any form of knowledge
or expression created
with one's intellect.
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Inventions
Literary
artistic
musical
visual works
computer software
Trademarks
"know-how"
Patents
A patent is a “contract”
between the inventor
and the Government
(Patent Office)
Patents
A patent allows the inventor(s) to
have a monopoly in manufacturing
and selling the invention from the
date the patent is granted to a
maximum of 20 years from the day
on which the patent application was
filed.
Patents
Consideration for the contract:
Inventor agrees to disclose fully
the invention to the public –
“fully” is the operative word
Patents
In exchange, the Government grants
for a “limited time” a “limited
monopoly” on the invention to the
inventor if certain “patentability
tests” are met
Prerequisites for a Patent
Utility
Novelty
Inventive Step
What Can be Patented
(from CIPO Web Site)
Yes
No
• New kind of lock
• Apparatus for building door
locks
• Process for lubricating door
locks
• Method of making door
locks
• Improvements of any of the
above
• E = MC2
• Romeo and Juliet
• A business plan
Barracuda Fights Trend Micro Patent
Infringement Allegations By Stefanie Hoffman, 8:04
PM EST Tue. Jan. 29, 2008
In the face of a pending investigation by the U.S. International Trade
Commission, Barracuda Networks publicly announced it plans to defend itself
against Trend Micro's accusations of patent infringement, claiming that the case
attacks the open source community.
Apple, Others, Hit with
Remote App Activation
Patent Infringement Suit
December 15th, 2009 at 9:00 AM - News by Jeff Gamet
Apple, Adobe, Microsoft and several other companies were
hit with a patent infringement suit on Monday by BetaNet
for violating a patent it owns. The case alleges the
companies are violating a patent that describes a process for
securely activating software remotely, according to The
Loop.
EOLAS SUES MICROSOFT FOR INFRINGEMENT OF
PATENT FOR FUNDAMENTAL WEB BROWSER
TECHNOLOGY THAT MAKES "PLUG-INS" AND
"APPLETS" POSSIBLE Chicago, IL, (February, 2, 1999)
BlackBerry maker, NTP ink $612 million settlement
Research in Motion averts shutdown of wireless e-mail service,
announces fourth-quarter warning.
March 3, 2006: 7:29 PM EST
- BlackBerry maker Research in Motion said Friday it agreed to pay $612.5 million to patent holding company NTP to
settle a long-running dispute that had threatened to shut down the popular wireless e-mail service for its 3 million
users.
Samantha Chang Case Study
• What are the relevant facts in the case?
Samantha Chang Case Study
• What are the general issues that need to be
decided?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is
using existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they
be legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab
had made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you suggest
she consider?
Samantha Chang Case Study
1. Why is Samantha’s idea a patentable invention since it is using
existing technology?
2. Should Samantha sign the documents? If she does will they be
legally binding?
3. If Samantha doesn't sign, what will happen?
4. Who owns the invention if Samantha does sign?
Who should own the invention?
Who has rights to the invention?
What are those rights?
5. If one of the undergraduate students “employed” by the lab had
made the discovery, would he/she have the same issues as
Samantha?
6. What impact does Samantha telling her mother about being
named as co-inventor have on the patentability of the invention?
7. If you were advising Samantha, what points would you
suggest she consider?