#HIP613: IP and Privacy For Digital Health Technology

So you’ve built a prototype at our 42 hour hackathon, What’s next? Hacking Health Ottawa held an IP and Legal session in collaboration with Smart & Biggar: A law firm specializing in intellectual property and technology law. The discussion was kicked off at Impact Hub, reminding us of the year old partnership with Hacking Health Ottawa and the exciting journey leading to this point. Hacking Health Ottawa founder Haidee then provided a breakdown of the night’s event, expressing thanks for Smart & Biggar and Impact Hub for helping bring the event.

She introduces the first IP Clinic facilitator for the evening: Jeff Leuschner from Smart & Biggar with over 10 years of experience in the patent profession having filed and prosecuted many patent applications within the electrical and computer engineering space in both the U.S and Canadian patent offices, as well as in patent offices overseas through foreign associates.

“Creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce”, as Jeff echoed WIPO’s definition of intellectual property to get things going with patents. He went on to identify for us the difference between tangible and intangible assets.

As Smart & Biggar’s diagram shows the contrast, intangible assets are non-physical items. Depending on the business, they can be Internet domains, licensing agreements, software, blueprints, medical records, trade secrets and other assets. A problem with many is how they take a lot of investment, creativity, work, time (i.e. resources) to create but are often easily copied, taken advantage of, or misappropriated. Ultimately both asset categories are recorded on the balance sheet in. Yes, intangible assets do add to a company’s future worth, and yes they can be much more valuable than tangible assets.

On the topic of patents, Jeff cited Reggie Brown’s $157.5M lawsuit on Snapchat as an example emphasizing to the room how vital is it to clarify ownership of an invention. No doubt, it is a prime reflection of how messy things can become in the world of patents.

Here’s a breakdown of his take-home points:

· Avoid public disclosures or offers for sale of your invention before filing a patent application

· Do not file a poorly drafted patent application

· Consider a patentability search first

Lastly, Jeff gave us some valuable insight into IP from the different types of IP to strategies and protection. Jeff reminded us that having an IP strategy remains critical in the grand scheme of things. When forming a strategy, he stressed the importance of defining the value proposition towards the product or service and how one can use their IP to help protect that in conjunction to achieving desired business goals.

Here are the key takeaways of his IP talk.

Why is IP Important?

IP is about protecting the time, money and effort you put into your business. By taking even some basic steps you can:

· Protect what’s yours

· Translate your hard work and ingenuity into profitable returns

· Set yourself up for growth or market expansion

· Keep competitors away

· Ensure you’re not infringing on others’ rights

· Prevent employees from helping your competitors

· Attract investors

· Promote your business to investors, licensees or potential buyers

Common Mistakes

The reality for many small businesses is that IP is either not on their radar or it has a very low priority. Many either haven’t yet realized the value of IP, or always have a long list of other important things that need doing. However, it’s important to make time for IP because a failure to do so can put your business at risk. Some of the most common IP pitfalls include:

· Telling others about your great idea before protecting it

· Thinking you’ve protected your business name just because you’ve registered with the Companies Office

· Trying to sell your invention before checking IP protection options

· Getting a logo, brand or website made without checking if you’re infringing on anyone else’s trade mark or copyright

· Expanding into new markets before thinking about IP protection — some pose greater IP risks than others

· Believing that registering your IP with CIPO also protects you overseas

· Not putting a copyright symbol on packaging, web pages and marketing material

· Using pictures, music and content created by others without first checking if you can

· Believing you’re automatically entitled to a domain name that matches your business name

· Not protecting confidential information — you should clearly document with employees and contractors who owns your IP, particularly in the early stages of a business

· Assuming IP is always expensive to protect

Up next was our second IP Clinic facilitator for the evening: Andrea Kroetch from Smart & Biggar with over 5 years of experience as a Trademark Agent focusing on trademark counselling, prosecution and litigation covering all aspects of the trademark life cycle, including clearance, trademark prosecution, opposition and enforcement.

BREAKING DOWN ‘Trademark’

A trademark is a word, symbol, picture, logo, design or shaping of goods, or a combination of these elements, used to distinguish the goods or services of one person or organization from those of another in the marketplace.

One easily recognized example of trademarks given by Andrea is Coke’s “Coca-Cola” written in its distinctive script. The success of the Coca-Cola brand is largely dependent on an intricate integration of legal protections including patents, copyrights and trade secrets. However, nothing the company owns is more heavily protected than the Coca-Cola trademark itself, which is estimated to have a value of over seventy billion dollars.

So what can’t I trademark? Andrea walked us through the next step in helping us identify so.

· Names and surnames of living persons (e.g. Jimmy Choo)

· Words that are descriptive of the goods or services associated with the trademark (e.g. caffeine for coffee)

· Words that clearly describe the place of origin of the goods or services (e.g. Montreal for smoked meat from Montreal)

· Words that describe the goods or services in any language (e.g. vin, vino, or wine for wine)

· Plant varieties; geographical indicators; obviously immoral or offensive trademarks

You’ll want to be mindful of marks which are confusing with a registered or pending trademark.

No to mention marks that are so nearly resemble as to be mistaken for a “prohibited mark” (e.g. OLYMPICS)

Here’s a breakdown of her take-home points:

· Pick a distinctive name

· Perform a trademark clearance search

· Register your trademark

· Use it or lose it (license use to others; stop unlicensed use)

· Avoid generic use

I’ve protected my invention with a patent, now what?

The next part on Andrea’s radar was about industrial designs. Whereas patents protection function, industrial designs protect the appearance of a useful article (i.e. visual features of shape, configuration, pattern or ornament, or any combination of those features applied to a manufactured article)

Here’s a breakdown of her take-home points:

· Don’t forget about this IP right

· Could it help with immediate protection on the look of your product before common law trademark right kicks in?

· However, no “common law” rights — must be registered to be valid

· Term of protection: 10 years, maximum (i.e. no renewal)

What about Copyright protection?

Copyright was another component on her radar! For the curious ones, the right to copy and sole right to publish reproduce, and perform in public a work of a substantial part of it in any form. It protects “moral rights”: attribution, integrity, and association (these can be waived). Statutory right which arises under the Copyright Act (but can register)

Term of Protection: from creation until 50 years after the creator’s death ( some exceptions, e.g. unknown authors, joint authors)

Once protected in Canada protected in 1666 other countries around the world under the International Treaties

Use proper marking: owner’s name, year

Here’s a breakdown of her take-home points:

· General rule of ownership: author of a work is the work’s first owner

· However: beware of exceptions which apply with respect to specific types of work

· E.g. employment context -> copyright ownership vests in employer (first owner) where (a) employed under a “contract of service”, (b) work created in course of performing contract, and © no contractual provision/agreement which states otherwise

· Any assignment must be in writing

How would one go about sharing key info to their employees?

Andrea would encourage you to look into Trade Secrets. They are any confidential information used in a business that provides a competitive edge. They are often protected by contractual agreement(s) and protection lasts only so long as “confidential information remains a secret.

Here’s a breakdown of her take-home points:

· Have a formal system/policy in place to protect them

· Are you pitching your “idea” to an investor — think about protection of “confidential information”

· Are you hiring a new employee — think about whether they can capitalize on your “confidential information” when they leave

What about for Corporate Transactions?

Andrea explained that confidential information and IP rights are present from inception to the sale of a company or product and are (or should be) addressed in virtually every transaction and agreement in between

Your number one concern is protecting your ownership of, and controlling other’s right to use, your company’s confidential information and IP rights.

Here’s what to consider:

· Taking measures to protect IP and confidential information in the employment agreements signed by each employee at the time of hiring/contracts with independent contractors and consultants

· Look for IP ownership and confidentiality provisions in all agreements you sign with vendors, manufacturers, licensees, customers, investors, partners, etc.

· Think about who owns IP when entering into joint development agreements or any other situation where another company/person may contribute to the development or provide improvements to your existing IP

Canadian Privacy Law?

Lastly, Andrea mentioned that Canadian privacy law governs how organizations are allowed to collect, use and disclose personal information. This revolves around the idea of asking for consent to collect/use/disclose, identifying for what purpose you are asking to consent, using personal information only for those purposes you have consent for. This enables individuals to access and manage personal information collected by organizations and gives the idea that individuals should be able to correct personal information and/or ask that it be deleted.

Here’s an overview of her points:

· Personal Information Protection and Electronic Documents Act (PIPEDA)

· Provincial Legislation which is deemed “substantially similar” to PIPEDA à Alberta, British Columbia and Quebec

· Health Specific Privacy Legislation à Alberta, Saskatchewan, Manitoba and Ontario

· Sector Specific Privacy Legislation

As you grow you’ll want to have:

· A company defined understanding (even a simple one) re: IP strategy — e.g. what IP do you have/need to help achieve your business objective

· An IP budget and a person who is responsible for managing and championing IP for your company

· Stock of what you own — track it (patents, trademarks, trade secrets, all your IP related agreements

You’ll want to consider the three pongs of IP value

Defensive

· Reduces potential for liability to 3rd parties

· Peace of mind to enter the marketplace

· Discourages litigation against you — counter-suits

Offensive

· Leverage your IP for market exclusivity — blocks competitors from access to technology & brands

Asset value

· IP rights are assets — part of corporate valuation licensed, sold, used as collateral

We also had Dr. Carsen, CHEO Hospital Physician, in the room learning about #IP and #PrivacyLaw !

All in all, Hacking Health Ottawa would again extend their thanks to all sponsors and who made this workshop such a success. We have many more events in the months to come. Stay tuned for more info! Don’t want to miss a thing? Be sure to register for our newsletter or follow us on Twitter!

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