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2004 seminar
series
A number of full day seminar modules
this past year were presented by experts on various topics. Five such
seminars have been held with great appreciation by participants :
(see Innovator, Strategic Management, Hi-Tech Finance, Hi-Tech Marketing and Project Management links
below). Each participants were provided with handout notes
that covered the presentations.
Typical
questions that were answered
We
now invite you to participate to:
IEEE INTELLECTUAL PROPERTY
SEMINAR
Broad Target Audience:
Technology Managers, Engineers, CTO’s & others. (do your colleagues a favour and make them aware of this
seminar). Other EMS Chapters interested in a live "Webinar"
of this event can contact
Grefford@ieee.org for details).
Typical Questions which will be covered
Objectives: The participants will
gain a basic understanding of a key intellectual property (IP)
concepts and their application to commercial activity including:
What various IP regimes, such as patents, trademarks, copyrights,
industrial design and trade secrets actually protect. The
substantive and formal requirements for obtaining various forms of
IP protection. Special considerations relating to specific
technologies, such as biotechnology, software, the Internet, etc.
Where in the world to protect IP and why. The interaction between IP
laws and competition law. How to work with an IP professional to
maximize efficiency and reduce costs. Identifying technology that is
suitable for commercialization and IP protection. The role of
universities and other resources in commercializing technology. How
to understand what IP you have and how it relates to third party IP
rights. How to maximize the value of IP through various licensing
and other arrangements. How to find licensees for your technology
and related IP rights. How to set royalties for licenses. The
elements of a licensing agreement. Infringement and validity of IP
rights. Enforcing and defending such rights. How to develop a
comprehensive IP protection and exploitation strategy for your
organization
Date: November 26, 2004
Time:
This seminar will take place from 8:30 a.m. to 4:35 p.m.
Location: CRC, 3701 Carling Avenue, Ottawa, Ontario
Speakers: Chris Tacit, Lawyer and Trade-Mark Agent, Nelligan
O’Brien Payne Wing Yan, Lawyer and Patent and Trade-Mark Agent,
Nelligan O’Brien Payne Trevor McDonald, Litigation Lawyer, Nelligan
O’Brien Payne Dinesh Kakadia, Technology Transfer Officer,
University of Ottawa Pierrette Breton, Principal, Global
Intellectual Strategies
Session Cost
(includes continental breakfast, breaks, lunch
and handouts):
$120 –
Registration before May 20, 2004, (all costs
includes GST)
$90 - OCRI, PEO and OSPE
members
$60 - IEEE Members
(Membership available at
www.ieee.org
)
$30 -
Students, IEEE (EIT)* and EMS Members.
Registration:
click here.
(space is limited to maximum 70 participants,
registration required
Some questions that will be answered
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Outline & Agenda:
08.30 - 08.45 a.m. Registration, coffee & muffins and networking
08.45- 08.55 a.m. Introduction & your IEEE & EMS updates (John
Grefford)
08:55 – 9:05 a.m. Overview and discussion of objectives
(Chris Tacit)
9:05 – 10:45 a.m. Protecting intellectual property rights (Wing Yan
and Chris Tacit) Patents and industrial designs, Trade secrets &
Trademarks, Copyrights and other Considerations relating to specific
types of technology: Biotechnology, Software, Internet, audiovisual,
Considerations relating to geography – where and how to protect IP
rights Competition law considerations
10:45 – 11:00 a.m. Morning Break
11:00 – 11:20 a.m. Identifying technology for commercialization (Dinesh
Kakadia) How to identify technology that can be commercialized at
the R & D stage. The university’s role in the commercialization of
technology. Other resources of assistance in the commercialization
of technology
11:20 – 11:40 a.m. Working with an IP professional to protect IP
rights (Panel discussion – Dinesh Kakadia, Wing Yan and Chris Tacit)
11:40 – 12:00 a.m. Morning Q & A session (all speakers)
12:00 – 1:15 p.m. Lunch
1:15 – 2:45 p.m. Exploiting and preserving intellectual property
rights (Chris Tacit and Pierrette Breton) • Auditing, licensing,
cross-licensing and pooling intellectual property rights • Searching
for licensees – commercial technology transfer and
stopping/preventing infringement • Technology Transfer -
Understanding the markets to which patents and trade secrets apply
Researching the players in the relevant technologies - Deciding on
who to approach for licensing (Pierrete Breton) • Obtaining evidence
to promote your position - Offensive licensing o The Portfolio
review – identify patents of interest to industry o Identifying
infringing technology/companies o Obtaining evidence of infringement
- Defensive licensing o Evaluation of validity of patents • Setting
royalties - Determining the value of the licensed or infringing
technology or product - Common industry rates - Example of rates set
by the courts - “Best practices” method of setting rates • Content
of licensing agreements
2:45 – 3:00 p.m. Afternoon Break
3:00 – 4:00 p.m. Enforcement of IP rights - Infringement and validity
(Wing Yan and Trevor McDonald) What is infringement? How can IP
rights be invalidated? What types of litigation and remedies are
available for infringement?
4:00 – 4:20 p.m. How to develop an IP rights protection and
exploitation strategy (Panel discussion – Dinesh Kakadia, Pierrette
Breton, Trevor McDonald, Wing Yan and Chris Tacit)
4:20 – 4:35
p.m. Afternoon Q & A session (all speakers) & request for evaluations
(Chris Tacit)
PRESENTERS
Pierrette Breton has over 20 years of experience in the
field of semiconductor technology. Before founding Global
Intellectual Strategies in August 2000, she spent eight years with
Northern Telecom’s Semiconductor Group in wafer fabrication and
device testing, followed by ten years in integrated circuit design
analysis; four years with Semiconductor Insights, and six years with
Chipworks. This extensive and functional experience has laid the
foundation for her work in support of Intellectual Property
Management. Since 1994, Pierrette has consulted in patent matters
involving licensing strategies and claim application. She has been
deposed on numerous occasions in support of Patent Litigations and
has testified at trial as an Expert Witness within the semiconductor
discipline. Pierrette is a registered U.S. and Canadian Patent Agent
and is a named inventor in two U.S. and corresponding Canadian
patent applications. She holds a diploma in Electro Mechanical
Engineering from Algonquin College in Ottawa, Ontario, Canada.
Dinesh Kakadia is currently Technology Transfer Officer at the
University of Ottawa. Prior to joining the University, he was
Director Finance at Lumic Electronics, an Ottawa-based fabless
semiconductor company where he was involved in raising over $15
million in venture financing over several rounds. Before joining
Lumic, Mr. Kakadia spent 5 years in Corporate Finance reviewing
private equity financing opportunities in the software and
electronics fields with a Vancouver-based investment firm. Mr.
Kakadia holds a Masters degree in Business Administration.
Trevor McDonald was called to the Ontario Bar in 2001, and
practices in the area of general civil litigation at Nelligan
O’Brien Payne LLP. He has acted on behalf of clients seeking to
enforce and protect their intellectual property rights in the
Ontario Superior Court of Justice, Federal Court of Canada, and
Federal Court of Appeal. He has recently been involved in a patent
injunction case involving the marketing of ceramic prop pants, and a
case involving ownership rights to a domain name.
Christian (Chris) S. Tacit, B. App. Sc. (Elec. Eng.), LL.
B., M.B.A., is a partner of Nelligan O’Brien Payne serving both
national and international clients in the private, public and
not-for-profit sectors. Chris’ practice encompasses corporate and
commercial law, technology law, and intellectual property law, and
much of his work involves clients operating in technology-intensive
industries or environments. Chris also practices in the areas of
public law and regulation. His particular focus is on the
communications, electricity and government sectors, and on the
deregulation of regulated sectors of the economy. Chris’ work
includes the representation of client interests in the courts,
before federal and provincial boards, tribunals and regulators,
before Parliamentary Committees and in various government
departments and agencies. In addition to being called to the Ontario
Bar, Chris is also a licensed professional engineer and a registered
trade-mark agent. Prior to practicing law, Chris held a number of
technical and managerial positions in the communications industry.
Chris holds a number of professional affiliations, is a frequent
guest speaker at various conferences and has authored a number of
published articles.
Wing T. Yan is a lawyer and registered patent agent and
trademark agent. He practises with the law firm of Nelligan Power in
Ottawa and is the partner in charge of the firm’s Intellectual
Property Group. Wing practises exclusively in the field of
intellectual property law and assists domestic and international
clients in acquiring all forms of IP rights. Wing has extensive
experience in dealing with Internet and multimedia copyright,
trademark and domain name infringements matters. Wing’s professional
affiliations include the Canadian Bar Association, Intellectual
Property Institute of Canada, American Intellectual Property Law
Association, International Trademark Association and Licensing
Executives Society.
You are welcome to submit suggested topics.
If
you wish to volunteer to help organise a seminar, do not hesitate and contact EMS Officers.
*
For additional information or to indicate transition please contact:
John Grefford at Grefford@ieee.org
, or call 613-839-1108. You may become a member at www.ieee.org
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