Post on 26-May-2022
Intellectual Property and Working as a Patent Agent
Mathieu MironMcGill University
May 7th 2015
Summary
Bio & description of B&C
Short Summary of Intellectual Property
Working as a Patent Agent
TrainingAcademicB.Sc. Biochemistry (McGill University, 1995)Ph.D. Biochemistry(McGill University, 2003)Post Doc (Génome Québec, 2005)Patent Agent (Canada 2011 et USA 2012)
Work ExperienceGénome Québec (2005-2007)Bereskin & Parr (2007-2009)Benoît & Côté (since 2009)
Benoît & Côté 2 principal partners, from big Montréal
Law/IP firms; 1 junior partners; 7 other professionals 8 support staff Expertises : Patents in all areas of technology; Industrial designs; Trade marks; Plant breeder’s right; Licensing; No litigation, but participate in litigation
Intellectual PropertyPatents
Trade marks
Industrial designs
Copyrights
Plant breeder’s rights
Integrated circuits
Trade secrets and know-how
What is a patent?
It is a territorial right on an invention
Monopoly of 20 years as of the date of
filing of the application for patent
A negative right, to exclude other from
the invention
Types of patent applications
Provisional patent application
International patent application
Utility patent application
National phases
Principal Steps
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How to protect a business idea
IP must be aligned with the business
plan
IP is a commercialisation tool
IP is an asset of the company
How to patent an innovation ?
Is it patentable? Is it marketable?What is the goal of this idea? Who is the inventor? Who is the owner? What are the target markets? Is it know-how or a trade secret?
What you must know about IP before starting a business
Know the players and their position Knowing the state of the art Patentability (asset creation) Freedom to operate (avoid litigation) Possible Solutions
Novelty
Inventiveness (aka – non-obviousness)
Utility
Patentability
Product Wider than the product sold
A right to exclude others
Not a green light for sale
Freedom-to-operate
To determine whether your product maybe infringing the patents of others in agiven jurisdiction.Comparison of patent claims of others to
your product.Budget: $ 3K to $ 50K or more
Freedom-to-operate
product
Competitor C
Competitor B
Competitor A
The right to sell, manufacture, import and use a product, process or device.
Get a freedom to operate opinion before launching a product
Check the validity of troublesome claims
Purchase or license the troublesome patent
Purchase the product or device from the owner of the troublesome patent
Bypass the troublesome patent (design around)
Attack the troublesome patent (re-examination, court judgment of invalidity)
Solutions
Websites to visit
http://www.uspto.gov/ http://www.google.com/patents http://www.patentlens.net/ http://worldwide.espacenet.com/
Our visionTraditional IP and Law firms
Benoît & Côté
“Licensing-out”
Revenue creation
Business opportunities
“Cross licensing”
How to become a patent agent
Technical Training:Masters or DoctorateWork Experience
Interpersonal and communicationskills, analytical mind Legal training To be lucky and have good contacts Mentoring Pass the patent agent examination
What is a good patent agent?
Experience in business and IP Technical skills Trusted person Easy communication Prioritizes the needs of his clients Has an international network Passionate and dedicated to client
success
The work of a patent agent
Preparation of patent applications; Prior art searches; Validity or Infringement opinions; Freedom-to-operate opinions; Communication with the patent office; Communication with clients; Intermediary between the client and
the patent office
Benoît & Côté
What motivates me and keeps me
going!
What keeps me awake at night
Thank you!
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