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Timely advice for entrepreneurs can avoid ownership conflicts
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One of the great satisfactions of entrepreneurship is creating new and beneficial ideas, and being able to claim an intellectual property (IP) right such as a patent as one’s own. However, there is no end of those who may wish to claim that ownership for themselves on the basis that they had a part in developing it and, of course, the possibility of rivals wanting to steal the IP outright is not unheard of.
Jennifer Marles, partner at boutique IP law firm Oyen Wiggs, finds it troubling that many entrepreneurs have unwittingly destroyed their own rights or rendered themselves vulnerable to ownership challenges through a lack of understanding of IP. She says: “I’ve had people phone us seeking a patent several years after they invented something that has taken off—and there’s nothing we can do. Or we encounter entrepreneurs who confuse the effectiveness of copyrights with those of patents—or are acting on rules that pertain to other countries.”
In every industry, IP protection is essential for fostering innovation. Aware of the challenges facing entrepreneurs, Marles has formulated some tips to help them to secure their IPS efficiently and properly.
First, in a startup scenario, Marles advises that the owner retains control of the IP through the appropriate use of clear and precise agreements.
Second, she stresses the importance of knowing ahead of time what steps are necessary to protect your IP. “For example, in many countries you cannot secure valid patent protection if you publicly disclose an idea before you’ve filed a patent application and in Canada and the U.S., you’re given a grace period of only one year,” she says.
A recent Canadian court case illustrates how vulnerable IP protection is: it found that discussions on an investor conference call, which had been made open to the public, amounted to a patent-invalidating public disclosure.
Marles also notes that, in most countries, earlier patent applications have priority over later applicants claiming the same subject matter. However, the advantage of being first must be carefully balanced by the need to gather enough data to enable a skilled person to practice the full scope of your invention. “You have to take the right steps at the right time, and a clear strategy will help you to evaluate what IP should be protected and when applications should be filed,” explains Marles.
For those cognizant of the importance of seeking legal guidance, one crucial early step is to ensure that you won’t be infringing on another company’s patents.
Finally, what constitutes patent-eligible subject matter varies by country and is in a state of flux in many jurisdictions, and not all inventions can necessarily be patented. “So be sure to consider these issues while developing your IP strategy,” says Marles.
“Plus, it could be that seeking a patent isn’t the best approach for your situation—you may require copyright protection or a trademark instead.”
Based in Vancouver and serving clients worldwide, Oyen Wiggs assists with IPrelated concerns through every stage of the process. This includes fundamental steps such as ensuring that employment and independent contractor agreements adequately protect a company’s IP rights, filing provisional patent applications before a journal article is published, licensing IP to others, or conducting due diligence on the transfer of IP.
Marles concludes: “The best general advice I can give to an entrepreneur is: start talking with a professional about your IP sooner than later. It could save you a lot of money and heartache down the road.”