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December 8, 2009 - Volume 2, Number 2 | |
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Intellectual Property at Gowlings Jason Saltzman and Henry Harris Recognized as Leading Lawyers Under 40
Intellectual Property Expertise
Gowlings has been a leader in intellectual property (IP) law for over a century. With more than 120 IP professionals, the firm has Canada's largest IP practice with professionals dedicated to patent, trade mark and copyright matters. Our IP group also includes expertise in the areas of advertising, marketing and regulatory affairs. As shown in the IP rankings below, Gowlings has been consistently recognized as a leader in IP law. In 2009, the leading U.K. legal publication Managing Intellectual Property Magazine (MIP) named Gowlings the Canadian "Firm of the Year" for both patent and trade mark prosecution. Trade Marks Gowlings has the depth and the breadth of experience to help all companies, from start-ups to multi-national corporations register, commercialize and enforce their trade marks, and secure and protect their brands. Copyright Whether from the perspective of right holders seeking to protect their creations, or of consumers seeking to make legal use of protected materials, Gowlings' Copyright law group helps businesses and individuals achieve their objectives. Patent Prosecution Gowlings helps clients stake a claim early and mitigate risk over the long run. Our patent professionals have extensive experience in helping clients file, commercialize and enforce their patents. In addition to their expertise as patent practitioners, many of our professionals have advanced scientific, medical or engineering degrees. This diverse expertise enables Gowlings to assemble the appropriate team to handle each client's individual patent needs. IP Litigation Our IP litigators routinely appear before all levels of federal and provincial trial and appellate courts across Canada, including the Supreme Court of Canada, and participate in multi-jurisdictional cases representing our clients' Canadian interests in concert with global litigation strategies. Based on judgements rendered, Gowlings has appeared in more reported trade mark proceedings over the past 10 years (1997 to 2008), and more reported patent infringement actions over the past five years (2004 to February 2009), than any other firm in Canada. Advertising, Marketing and Regulatory Affairs Our professionals combine in-depth advertising knowledge and industry savvy to provide our clients with innovative solutions. Our clients include advertising agencies, manufacturers, packaged goods companies, high technology and telecommunications firms, television networks, production houses and publishing firms. The group ensures marketing campaigns, contests, and packaging meet industry and legal requirements, while preserving the integrity of our client's ideas. This unique approach has led our group to become Canada's undisputed leader in advertising, marketing and related regulatory law. Gowlings publishes a variety of complimentary newsletters and bulletins that address current legal issues including the IP Report Online @ Gowlings (an electronic bulletin that provides brief, timely overviews on recent developments in Canadian intellectual property law), AdBytes @ Gowlings (an electronic newsletter directed to the advertising community highlighting relevant Canadian legal decisions, policies and legislation), and Notes From Moscow @ Gowlings (a periodical publication relating to intellectual property law in Russia). To stay informed, you can subscribe to these publications online at our website www.gowlings.com. We would be pleased to provide further information regarding any particular area of expertise upon request. Intellectual Property Rankings in Canada 2009 Canadian Patent Prosecution Firm of the Year Gowlings was recognized as tier 1 law firm for Patent Prosecution and Patent Contentious Practice Areas Ranked as a leader in all aspects of trade mark, copyright and patent law for 12 consecutive years Gowlings professionals rank among the top in Canada A top IP law firm in Toronto and Ottawa Most frequently recommended IP Firm "Most frequently" and "consistently" recommended IP professionals Eight professionals rank among the leaders in IP. More patent and trade mark professionals listed than any other Canadian law firm. Six Gowlings patent experts named as world leaders in their practice. A "leading" IP firm in Canada Ten professionals ranked as leaders in IP in Canada #1 ranking as an IP Firm in Canada Nine professionals ranked as IP leaders Eighteen professionals named among the best of the best in Canadian IP #1 ranking as an IP Firm in Canada Intellectual Property Rankings in Russia One of the top five IP firms in Russia. Gowlings professional considered a "definitely recommended" practitioner. "A great specialist outfit that has built up a reputation over the past decade through the very effective management of its lawyers." Gowlings Moscow professional named a Russian leader in patents A top six IP firm in Russia Gowlings Moscow ranked as one of Russia's top IP firms in patent, trade mark and copyright matters. Gowlings professionals ranked as leaders in IP Gowlings Moscow professional ranked one of the four leading patent practitioners in Russia Gowlings ranked as one of only two "leading" IP firms in Russia. Moscow professionals recognized as "recommended" and "leading" practitioners
Intellectual Property Strategies for Israeli Businesses
1. IP: The Key to Maximizing the Value of Innovation Few countries rely more on innovation and creativity than Israel. Israel's well-being depends on the diligent application of human intelligence and talent. Fortunately, Israel is blessed with a highly educated population that continuously generates world class science, technology, art, and commercial innovations. Such creativity, however, does not, in itself, guarantee significant commercial success. To maximize the long-term economic value of innovation, businesses must also perfect and utilize the intellectual property ("IP") associated with particular innovations. The effective use of IP can increase the value of a business in a number of different ways, including: (a) IP can help increase the asset value of the business, enabling it to receive higher levels of external financing, realize higher values in M & A transactions, and sustain the market value of its publicly-traded shares; (b) IP can enhance revenues derived from the sale of products and services by increasing the company's competitive advantage; (c) IP can generate additional revenue through licensing; and (d) IP can serve as an important building block in international structures for reducing worldwide tax. IP is also an important component of any risk management strategy. Companies need to protect their own valuable IP from claims by creditors and other third parties. They should also take steps to reduce the risk of inadvertently infringing the IP of others. 2. What is Intellectual Property? The term "intellectual property" refers to specific bundles of legal rights that reward innovators with lawful monopolies in creative output, including patents, copyrights, trade marks, plant breeders' rights, and product designs. The owner of IP has the legal right to prevent others from taking a free ride on the IP. The IP in a particular product or technology is distinct from the item itself. Hence, for example, when a painter sells you an original painting, that sale does not include the copyright in the painting. The copyright - that is, the legal right to make copies - remains with the painter, who may sell or license the copyright as she sees fit. Trade secrets (sometimes called "confidential information") are often lumped together with IP. However, from a strictly legal perspective, trade secrets offer a smaller range of legal protection. While IP can be enforced against anyone who engages in activities covered by the IP, trade secrets are enforceable only against particular parties who have received access to the trade secrets. From a business perspective, IP and trade secrets are sufficiently similar that they can be treated as the same thing. 3. Protecting IP First, to the extent feasible, you should treat all creative output that your business generates or acquires as confidential. Trade secrets have considerable value in and of themselves. Of equal importance, maintaining the confidentiality of an innovation allows you to convert it into different forms of IP, such as patents and registered designs. The right to secure that kind of IP protection will be lost in many countries automatically when the innovation is disclosed to another on a non-confidential basis. To maintain confidentiality, it is best to use good confidentiality agreements in your dealings with others and to implement practical measures to preserve secrecy (e.g. limiting circulation of confidential information and safeguarding it under lock and key or the digital equivalent). Second, you must identify all innovations you have paid for. Many businesses have a very limited knowledge of the innovations that have been generated with their resources. It is incumbent on each business to take stock of the innovations it has paid for and to assess whether, and how, to protect those innovations. Third, you must ensure that you own (or have a satisfactory legal right to use) the innovations that you paid for. Errors of this kind are surprisingly common. Business owners often just assume that they own everything they pay for. That is not always the case, particularly when dealing with independent contractors. There have even been cases in which employees have successfully claimed ownership. It is always advisable to address this concern twice - first, before the employee or contractor begins any creative work, by requiring them to sign a contract in which they agree that you will own the IP that they create; and, second, after they complete the work, by requiring them to execute a formal IP transfer document (called an "assignment"). The second step is necessary because in many countries it is not possible to transfer the entire legal ownership of IP before it comes into existence. Fourth, where it makes economic sense, you should take appropriate steps to secure formal IP protection in all appropriate countries. That is done by filing one or more applications in the appropriate government IP registry offices. Many forms of IP cannot be established unless the IP owner makes a formal application and the IP undergoes an examination process. There are certain international treaties that allow you to file in one jurisdiction and then file in other countries at a later date. That helps to spread the considerable expense of international applications over a more manageable period of time. 4. Assuring the Supply of Related Assets Intellectual Property is only a set of legal rights. Standing alone, IP does not produce any economic value. For IP to generate profit, it must be actively employed in some commercial activity. The traditional approach is to use IP as a tool to make or market a product or service. However, if you are using IP that way, it may not be possible to the realize its highest value unless the IP is used in combination with particular individuals or assets. For example, a patented technology for manufacturing a product may not be useable in a profitable manner unless certain key individuals are involved in the production process. Also, it may not be practical to manufacture the finished product unless a component made by a third party (say, for example, a particular computer chip) can be purchased and installed in the finished product. Accordingly, it is often crucial to establish contractual commitments from key individuals and suppliers that guarantee the ongoing supply of their services and products. 5. Risk Management Businesses should protect their own IP from risks that arise in regular operations. That can be done by separating the ownership of IP from actual business operations. First, one forms a holding company ("HoldCo") whose only function is to own the IP and license it to a related operating company ("OpCo"). The OpCo uses the IP under license. If the operating company becomes insolvent or experiences some other calamity, the HoldCo terminates the license, and the ownership interest in the IP is protected from falling into the hands of creditors. Risk management also involves protecting your business from infringement claims by others, which is increasingly common and nasty. Consider, for example, the "patent troll" business model. "Patent troll" is a name that some observers apply to businesses that acquire strategic patents for the exclusive purpose of extracting money from infringers, either voluntarily by way of license or involuntarily pursuant to a court order. Most "patent trolls" employ sophisticated litigation methods that are very aggressive and effective. In any event, over the last several years, there has been a significant increase in the number of IP infringement claims and in the intensity with which such claims are being pursued. Hence, all businesses would be well advised to exercise greater efforts to avoid getting sued for IP infringement, particularly in the United States. This requires increased levels of searching and due diligence before making a significant investment in any technology, trade mark, or product design. 6. Tax Structuring When a business has international scope and owns or intends to acquire IP in various countries, it may be possible to establish an international structure that lowers the total tax burden on worldwide operations. To do that: (a) one incorporates a HoldCo in a low tax jurisdiction; (b) the HoldCo acquires all IP relevant to the worldwide business operations; (c) actual business operations (e.g. manufacturing, sales, collection) are conducted by OpCos set up in particular countries; (d) HoldCo grants the OpCos licenses permitting them to use the IP that they need in their jurisdictions; (e) the OpCos pay reasonable license fees/royalties to HoldCo for use of the IP. If all works under the applicable tax regimes, the license fees/royalties paid by the OpCos to HoldCo are treated as an expense reducing tax in the operating jurisdictions and the license fees/royalties are taxed at a very favourable rate in HoldCo's jurisdiction. This structure works best when the IP is not created until after the structure is established and the HoldCo is its first owner. Otherwise, capital gains tax might be triggered when the IP is transferred to the HoldCo. 7. Alternate Dispute Resolution An effective IP strategy requires the use of many contracts with third parties (e.g. confidentiality agreements, license agreements, R & D agreements, escrow agreements, and assignments). This is usually done on an international basis. In most cases, it is highly desirable to avoid the obligation to litigate disputes that might arise under those contracts in a haphazard manner. In particular, companies that reside outside the United States will often be better off avoiding the shark tank of US litigation. In any event, you want to ensure that the process will be fair, manageable, and economically reasonable. Hence, it is highly desirable to craft clauses that stipulate the applicable law of the contract, the method by which disputes will be resolved (e.g. mediation followed by arbitration), and specific rules and procedures that will govern mediation and arbitration. Using good dispute resolution procedures, and avoiding bad ones, can make a huge difference, and may even prevent some disputes from arising altogether. 8. How Gowlings Can Help Gowlings has the largest group of Canadian professionals dedicated to the establishment, enforcement, and commercialization of IP. Our IP practice is widely recognized as one of the best in the world. Moreover, because Gowlings is a full-service law firm, we have many lawyers with expertise in virtually every area of specialization needed by any business, including commercial transactions, finance, tax, competition, and government regulation. Accordingly, Gowlings has a unique ability to assist clients in a comprehensive manner, understanding how IP impacts business issues and vice versa. With offices across Canada and in London and Moscow, Gowlings can help its clients on a truly global basis. Jason Saltzman and Henry Harris Recognized as Leading Lawyers Under 40 Gowlings' partner Jason Saltzman is a 2009 recipient of Lexpert's 2009 Rising Stars award. The award, which was presented November 12th, honours leading lawyers and corporate counsel under 40, paying tribute to the rising stars of Canada's legal community. Jason, a partner in the Toronto office, is truly deserving of this award. He is dedicated to the practice of corporate finance and securities law, and the Firm's Israel Group. Henry Harris a past recipient of this award in 2008, is also an active member of the Israel Group. Both Jason and Henry are involved in providing Gowlings services to Israeli clients. |
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