Reviewing 'Game Planning to Build Strong IP'

On April 25, one day before World Intellectual Property day, together with Bereskin & Parr, OBIO held a workshop entitled “Game Planning to Build Strong IP”.  The workshop focused on two important aspects of intellectual property: IP strategy and patent searching.

Noel Courage, Partner at Bereskin & Parr, began by providing an overview of the different types of IP: trademarks, copyright, industrial designs, trade secrets and patents.  Noel emphasized that IP is a key company asset that can be bought, sold, licensed, used to secure a loan, and is the focus of heavy due diligence during financial transactions since it often represents significant tangible value.

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He highlighted that it is important to evaluate patentability of inventions and evaluate freedom to operate (i.e. if the patented invention can potentially infringe another party’s patent). He stressed the importance of proactively managing IP from inception to filing patent applications, looking for partners/licensees, and protecting improvement IP.  IP management also includes maintaining assignment agreements, confidentiality agreements, including IP considerations in collaborative research contracts and material transfer agreements.

Finally, Noel concluded that it is important to keep IP-related documents up-to-date to enable rapid and transparent due diligence by investors. Companies should maintain a list of all IP owned or licensed, making sure that inventors are identified correctly. IP ownership is secured by the company and can be traced to its origin and it is easy to analyze strengths and weaknesses of the IP portfolio. The company should have a clear IP strategy which should include plans of using and improving current IP.

Isi Caulder, Partner at Bereskin & Parr, reviewed key patentability requirements and then provided an excellent overview and examples for advanced patent searching. She elaborated on the three steps for patent searching – identifying relevant keywords and search terms, performing the patent database search, and finally focusing and refining the search using initial findings.

When doing patent searches, it is useful to identify the relevant journal article associated with the invention. Isi pointed out that although Google Patents is a powerful aggregate patent database that allows for easy searching, more in-depth searches may also utilize various national databases (USPTO, EPO, WIPO-PCT, etc.) and other multi database search tools.

Isi pointed out that analysing the results is equally important to doing the patent search itself.  It is useful to map claims and inventions of various similar patents with the inventive features and claims of your own invention, as a way to predict which parts of your invention will be considered truly novel.

Finally, ISI also described how freedom to operate (FTO) searching is distinct.  FTO searches are done to identify if your product infringes on any third-party patents and will focus on active patents in countries where you will manufacture your product, where competitors are located, and where you will sell your product. For issued patents that have claims that apply to your technology, there are 4 ways to proceed: (i) check if claims can be narrowly construed by checking the patent examination history, (ii) evaluate if you can change your technology and design around such claims, (iii) explore if there is prior art to invalidate the patent or restrict its scope, and (iv) assess if you could buy or license the patent.

If you missed this valuable OBIO workshop, the recorded webinar of the presentation is now available on the OBIO Member Portal. (If you are not yet an OBIO Member, please click here to sign up.)