Protecting Your IP Against Corporate Espionage STEP Trade Conference

Protecting Your IP

Against Corporate

Espionage

September 26, 2012

STEP Trade Conference

Saskatoon, SK

Global Travel

Business Objectives

• Identify / explore / exploit market opportunities

• Manufacturing options

• Identify / assess / engage suppliers

• Identify potential business partners

• Raising money

• Looking for technology / technical information

2

Global Travel

Destinations

• Trade shows

• Conferences

• Trade missions

• Stand-alone targeted trips

3

IP Exposure Risks

• During travel

• At the destination

• In your hotel room

• In public places

4

BE AWARE OF YOUR SURROUNDINGS

Before you leave home

5

Take stock of your IP

• List the most valuable thing(s) you’re taking

• Understand the options for protection

• Decide if patenting is required

• Provide sufficient lead time to secure filing

• Vette your promotional materials

Understand your IP

Business Opportunities

• Device / apparatus

• Product / composition

• Method / process

• Software / app

• Services

6

7

Understand your IP

What’s your competitive edge?

• Quality

• Disruptive

• Price

1. Give it away via “public disclosures”

2. Keep it as a “trade secret”

3. Protect it legally:

(1) Patents

(2) Trade marks

(3) Copyrights

(4) Industrial designs

Options for dealing with IP

Trade Secrets Patenting

best suited when reverse

engineering difficult

potentially unlimited life

known by limited # people

if stolen, harder to legally

enforce rights

hard to enforce in a large

company

requires clear in-house

policies

someone else could patent

& prevent you from using

patent applications may

evolve from trade secrets*

best suited when easy

to reverse engineer

maximum 20-year lifespan

issued patent = strong

legal position

creates marketplace

barriers to competitors

onus on you to monitor

for infringement

can be expensive

Trade Secrets v. Patents

To enable “value capture” (i.e., $$$)

from your ingenuity

creates a legal monopoly

enables licensing opportunities

protects your business interests

FOR 20 YRS From the filing date

Why Patent?

11

After you leave home

Disclosing “Trade Secrets” to Others

Accidental

• Elevator pitch & enticement

• Be aware of your surroundings

Deliberate

First Things First: Use NDA / CDAs • Non-Disclosure Agreement

• Commercial Disclosure Agreement

The Next Step • confidential business information

• trade secrets & patenting opportunities

Risk: • NDAs/CDAs are only as good as the integrity

of the people you’re dealing with

• legal input is essential

After you leave home

Summary

• Prepare in advance

• Understand your key IP

• Plan / implement IP protection strategy

• Travel time is not work time

• Be aware of your surroundings

• Be prepared for the next steps

13

Thank You

montréal ottawa toronto hamilton waterloo region calgary vancouver beijing moscow london

Dan Polonenko, PhD Principal, Patent Agent

Tel: 604-443-7623

Email: [email protected]