Chat­ter 10 EDI­TOR’S DESK

Timely ad­vice for en­trepreneurs can avoid own­er­ship con­flicts

BC Business Magazine - - Contents -

EOY notches a quar­ter-cen­tury of cel­e­brat­ing busi­ness ex­cel­lence

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.”

Le­gal guid­ance can help nav­i­gate in­tel­lec­tual prop­erty is­sues

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