Faculty of Engineering
Forms of Intellectual Property
Why is IP Protection Important?
―I’m convinced that the management of
IP is how value added is going to be
created at Xerox. And not just here,
either. Increasingly, companies that are
good at managing IP will win. The ones
that aren’t will lose.‖
Richard Thoman, CEO, Xerox
Power of Patents
Leaders of many companies, including
Microsoft, Dell, Dow Chemical, Gillette
etc. recognize that intellectual assets
have become the new source of
shareholder wealth and competitive
The hidden challenge is how to unlock
the power of patents.
Patents enable companies to stake out
and defend a proprietary market
Patents are issued to technologies that
are new, useful and non-obvious.
In general, the information in a patent
cannot have been disclosed prior to
Why Seek protection?
Ownership prevents another company
from copying or duplicating your
Businesses use new patents for core
technologies to extend their area of
Strategic use of IP generates
possibilities: mergers, acquisitions, joint
ventures and licensing.
Patents Help Secure a
Proprietary Advantage 1
core technologies and business
Possibilities: technologies, business
Companies must protect and leverage
whatever adds the most value to their
business & represents the most vital
sources of their competitive advantage.
Patents help Secure a
Proprietary Advantage 2
Boost R&D and branding effectiveness.
Patents help companies build category-
leading products as well as enhance the
branding efforts devoted to those products.
Companies think about the potential
strengths of patents when setting R&D
E.g. Gillette Sensor—selection of the
patent that was the most difficult to get
Clustering and Bracketing
Clustering—building a patent wall
around a product.
Bracketing—using patents to hem in a
competitor’s initial market lead.
Patents Help Secure
Proprietary Advantage 3
Anticipate market and technology shifts.
A solid patent strategy can help
companies anticipate shifts and respond
with new products and services.
What is Patentable?
A pencil with an eraser is not patentable
because it is an aggregation of 2
different elements that do not
The apparatus that keeps the eraser on
the pencil is patentable.
Improving the mechanical pencil is
When should I consider a
When alternative forms of protection are not
able to exclude others from making, using, or
selling the subject matter.
When a patent can act as a shield.
When the cost to enter a market is
significant—the benefit of exclusivity
outweighs the cost of disclosing a trade
Some companied consider a patent as an
offensive tool to capture market position.
Even if I have patentable technology,
when should I NOT apply for a
an inventor wishes to keep aspects of
an invention secret, the inventor should
not apply for a patent.
FAQ’s about Patents
What does a patent give me the right to
Providesthe right to prevent others from
doing certain things.
When should I consider a patent?
When the cost to enter the market is
To maintain a market position.
When should I not apply for a patent?
When the inventor wishes to keep aspects
of the invention secret.
More FAQ’s about Patents
Where should I first apply for a patent?
to predict—use potential markets
and the Patent Cooperation Treaty.
What is the term of a patent?
Basically 20 years from the date of filing.
When does a patent become effective?
From the date of issuance.
MustI apply for a patent before I make
any disclosure of the relevant material?
Yes –with qualifications.
A trademark may be a word, a symbol or
design or a combination of these used to
distinguish the wares or services of one
person or organization from those of others in
Brand names—e.g. Coca-Cola
Slogans—‖things go better with Coke‖
Packaging—Coke’s distinctive bottle
Logos—the Nike swoosh
Colours—the colours of pills
Buildings—Maple Leaf Gardens
FAQ’s About Trademarks
What is not registerable?
The product or service is primarily of a first
or last name.
A word that clearly describes the goods or
services being promoted.
Geographical areas cannot be trademarks.
A word of another language cannot be
A mark cannot be used if it may be
confused with a mark already registered.
A form of protection that allows the
inventor to both use the invention and
keep the details of the invention secret.
Trade Secrecy vs. Patenting
Ifyou can determine the nature of the
invention by examining the end product,
then trade secrecy is not a viable
Candidates for trade secrets:
Can be used without revealing the
invention to outsiders
Is unlikely to be independently discovered
by an outsider
Can be kept confidential by taking
Advantages of Trade Secrets
A patent expires at the end of its term
It can take years to obtain a patent.
A trade secret may relate to information
that cannot be patented at all.
A trade secret is not limited
A patent may be found invalid.
In many countries patents are published
before they have issued.
Risks of Trade Secrets
Secretly using a trade secret device or
process may not prevent another party
from patenting a device or process
based on the information.
A trade secret possessor cannot
preclude others from using the trade
Trade secrets are difficult to police.
A trade secret is more fragile than a
Registration of Copyright
Not necessary in Canada or US–
although it is recommended.
Copyright exists for the life of the author
plus 50 years.
Advantage of registration is proof of
Copyright vs. Patent Protection
Subject material must be
Invention must be new,
useful & nonobvious
Does not require
registration for protection
Must be registered with
the gov’t patent office to
Protection lasts for 50
years after death of author
Not necessary to apply for
Protection limited to 20
protection in other years from date of filing
countries (Berne Must apply through PCT
Convention) and eventually within
other countries where
protection is desired