The Toronto Chapter of the Licensing Executives Society (LES) (USA and Canada) is providing a Certified Licensing Professional (CLP) exam preparation course on March 25, 2020 from 8 am to 5:30 pm. Natalie Raffoul will join Michele Riley, Managing Director of Stout Risius Ross LLC and Paul Stewart, Managing Director of PASCO Ventures LLC, in providing a 9-hour, in-depth and substantive course that will help prepare professionals for the CLP Exam.
The course will be held at Torys LLP, 79 Wellington St. W., 33rd Floor (reception), Toronto, Ontario M5K 1N2
Register before February 14, 2020 for the early bird rate!
Brion Raffoul is pleased to announce that Natalie Raffoul has been selected as an IAM Global Leader. “When it comes to business method and software patents, few are as knowledgeable as Natalie Raffoul. More than just a prosecution pro, she is a savvy strategist who understands how to secure commercial advantages for clients in global marketplaces.” Click here to find out more.
As a patent agent, Ms. Raffoul specializes in procuring IP assets for her Canadian clients worldwide. She also advises on worldwide IP filing strategies and portfolio management, which includes trade secret considerations. Her technology expertise includes: electronics, communications and networking, manufacturing, consumer products, artificial intelligence, cybersecurity, and mobile applications.
As a lawyer, Natalie also advises on IP enforcement issues, in the pre-litigation context, and she is an expert in negotiating successful agreements for her clients, that cover IP rights in Canada and globally.
Natalie holds a degree in electrical engineering from Western University (London, Canada) and a Juris Doctor in law from Queen’s University (Kingston, Canada). She is also a registered patent agent.
Generating income is typically top of mind
for any business. For technology companies, this often means that sales and
marketing go hand-in-hand with product development. During product development,
confidential clauses in agreements shield companies from public disclosure of the
invention. However, the United States has an “on-sale” bar which prevents one
from patenting an invention that has been offered for sale for more than one
(1) year prior to the patent application filing date.
Recently, the U.S. Supreme Court held in Helsinn Healthcare S.A. v. Teva
Pharmaceuticals USA, Inc. (Helsinn)
that a sale made under confidentiality obligations (a so-called “secret sale”)
qualified as prior art under the “on-sale” bar in 35 U.S.C. 102(a).
In that case, Helsinn Healthcare S.A. entered into a confidential agreement that
granted a partner company the right to, inter
alia, sell Helsinn’s chemotherapy product. Helsinn filed the first patent
application on their product more than a year after executing the agreement.
The U.S. Supreme Court held that even though the agreement between Helsinn and
its partner company was confidential, the “secret sale” was a bar to
patentability and thus Helsinn lost their patent rights. Accordingly, although
confidentiality clauses may work in many circumstances, caution should be exercised when discussing new products with
prospective customers prior to filing a patent application.
So how does a company prevent the
self-inflicted wound of invalidating its patent before the application is even
filed? Consider what actually makes the “secret sale” a problem in the first
place. The US Supreme Court cited Pfaff v. Wells Electronics, Inc., which
provided the requirements for the conditions that create an on-sale bar:
the product must be the subject
of a commercial offer for sale; and
A commercial offer for sale will typically
require some manifestation of intent. However, determining when a product is
ready for patenting can be confusing. The court held in Pfaff that drawings or other descriptions of the invention that enable
a skilled artisan to practice the invention were sufficient to make a product “ready
for patenting”. Notably, the Court in Pfaff
held that even an offer for sale that
did not disclose the details of the invention could cause an inventor to lose
the right to patent.
Helsinn raises significant issues for early stage business activities. During early product development, offering
product solutions for sale can be easy and unintentional. For example, whiteboard
presentations to prospective customers may in fact provide enough detail of the
product to make the invention ready for patenting. Any suggestion of an offer
for sale during such discussions could easily run afoul of the on-sale bar. An
NDA is not enough, both parties should
be clear as to whether or not there is an intention to sell the product. The other option: file a patent application before
your one-year grace period lapses.
Brion Raffoul wishes all the budding scientists, computer scientists, engineers, and mathematicians a Happy National STEM Day. Without STEM careers, patent law would not have developed to what we know it as today. If any budding scientists or engineers need some motivation to continue on the STEM path, here are some historical Canadian patents for inspiration!
For example, one of the first electric light prototypes (before Edison’s) was patented in 1874 by Canadian inventors Henry Woodward and Mathew Evans. Unable to secure investors, Woodward sold the rights to the US Patent to Edison in 1879. Edison later bought a share in the Canadian rights.
Brion Raffoul will be closed on October 14, 2019 for Canadian Thanksgiving. The Canadian Intellectual Property Office is also closed, so any patent or industrial design deadlines falling on October 12 to 14, 2019 are extended to October 15, 2019.
“It’s impossible for any organization to have all the best ideas”
~ General Electric, Open Innovation Manifesto
Open Innovation as an R&D strategy may seem counter-intuitive; traditional corporate culture dictates the use of secret R&D labs that operate in an information silo. However, open innovation can offer many competitive advantages, such as complimenting your company’s internal skills and know-how with external knowledge and ideas, lowering R&D costs, and increasing differentiation in the market.
For example, in 2000, the Canadian gold mining company Goldcorp Inc. crowdsourced gold prospecting in an under-performing mine; Goldcorp knew they were sitting on a literal and figurative gold mine but their geologists could not find the main deposits of gold. Goldcorp created a challenge for the general public; they released all Goldcorp’s geological data (going back as far as 1948) and offered $575,000 in prize money to the innovators that could find the elusive gold deposits. At the time, this type of open innovation was contrary to traditional mining practices: Goldcorp was admitting they were unable to find the gold and was releasing all their proprietary data. However, Goldcorp’s challenge led to more than 110 gold deposits that yielded over $6 billion worth of gold.
So, if that doesn’t answer why open innovation is a worthy consideration for any business, consider that patent filings in Canada have not increased significantly in the past ten (10) years. However, this stagnation is not an issue of lack of funding. Indeed, statistics from Industry Canada indicate that Canada is second only to the United States when it comes to venture capitalist funding.
Collaboration between companies and with the public at large should be considered to invigorate innovation in Canada. In another successful example of open innovation, Bombardier held a contest to solicit urban mobility designs. They created a social media open innovation community integrated with live, offline workshops. The contest rules stipulated that the winners must transfer their IP to Bombardier in exchange for a small prize. Bombardier also kept a right of first refusal for a year for all non-winning ideas. By creating a community around innovation, even outside their company, Bombardier created a sense of self-determination and pride in the community, that resulted in innovation pouring into Bombardier. Indeed, Bombardier received input from 2,486 participants from 102 countries that contributed 4,239 designs, 25,979 evaluations, 8,565 comments and 3,445 messages on Bombardier’s proposed urban transportation projects. As a bonus to uncovering a gold mine of innovation, Bombardier customers were very receptive to their more open and customer-orientated brand.
However, it is important to note that “open” innovation
does not necessarily mean the innovation is in the public domain; the devil is
in the details. IP ownership provisions should be clearly outlined in an agreement
between all involved parties. The following questions can be helpful in
outlining the preferred ownership details:
Who will own the IP stemming from the project (foreground IP)?
What about jointly created IP (joint ownership/management of IP assets should be approached with caution)?
Consider motivation factor for crowdsourcing when innovators own their IP?
Does a royalty-free license in perpetuity make sense given the motivations of the IP owner (i.e., the company or the innovator)?
What IP do the innovators and the company already own (background IP)?
Who owns the feedback stemming from the project?
Should a right of first refusal be included for IP that is not exploited during the project?
The bottom line: open innovation can be a great way to invigorate
innovation within your company without
resorting to a significant increase in R&D funding.