Smart IP - Gaining speed and de-risking investment

Your IP can be your business’ most valuable asset. Without it, what do you really have? Shouldn’t protecting your IP be a top priority?

Early on in an innovation project, it’s important to ask who you need at the table. A key player often overlooked is legal counsel. Imagine discovering too late, after all your resources and efforts have been invested, that someone else owns your innovation or you are infringing someone else’s IP. Unfortunately, in many cases, this step is overlooked or avoided because of the perception that it is too costly.

Connectiv Innovation in partnership with TechConnex, facilitated the second of a six-part Innovation Peer Group series. During the sold-out event, senior executives discussed key strategies for protecting their IP. The discussion was led by Amalia Berg, Partner and Head of the Intellectual Property (IP) group at Goodmans LLP. She shared best practices in the areas of IP and technology law with an emphasis on patents, trademarks, copyright, and trade secrets.

Amalia emphasized that being first to file is often crucial in protecting any IP. “In some cases, who filed first is more important than who came up with the idea first.”

Most entrepreneurs and startups have a limited budget. However, properly identifying, classifying and developing a strategy how to protect your IP from the onset, for example by way of contracts and filings, is money well spent and will help assure you and any potential investors that you own the IP, that you can protect it, and that you are not violating the rights of others.

Where budgets are limited, cost-effective strategies can be out into place.   For example, patents can be filed by way of a provisional filing in the United States and eventually graduated to a full filing within a year. You can file for a trademark in Canada even before you start using it and this will give you a six-month grace period to file in other countries based on the Canadian filing date. Doing so will provide an opportunity to look and assess where your key markets are and give insight into which territories should be your priority to file for trademark protection. Furthermore, not all inventions need to be protected by a patent or are even patentable. In many cases, they can be protected through trade secrets, copyright, or trademarks.

Another crucial consideration most businesses overlook is what independent contractors own. When work is completed by an independent contractor, all rights belong to the contractor unless there is an assignment in writing and waiver of moral rights (the authority to change or modify the original creator’s design).

With that being said, good legal counsel will recognize the different considerations that go along with every invention including cost, risk tolerance, time and resource constraint and help you develop a strategy that works for you, Therefore, it is important to include a reputable legal consultant from the beginning on any innovation journey.

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