Protecting Your IP Against Corporate Espionage STEP Trade Conference by Dan Polonenko, PhD

1. Protecting Your IP
Against Corporate
Espionage
September 26, 2012
STEP Trade Conference
Saskatoon, SK

2. 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

3. Global Travel
Destinations
• Trade shows
• Conferences
• Trade missions
• Stand-alone targeted trips
3

4. IP Exposure Risks
BE AWARE OF YOUR SURROUNDINGS
• During travel
• At the destination
• In your hotel room
• In public places
4

5. Before you leave home
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
5

6. 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
7

8. Options for dealing with IP
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

9. Trade Secrets v. Patents
Trade Secrets Patenting
 best suited when reverse  patent applications may
engineering difficult evolve from trade secrets*
 potentially unlimited life  best suited when easy
 known by limited # people to reverse engineer
 if stolen, harder to legally  maximum 20-year lifespan
enforce rights  issued patent = strong
 hard to enforce in a large legal position
company  creates marketplace
 requires clear in-house barriers to competitors
policies  onus on you to monitor
 someone else could patent for infringement
& prevent you from using  can be expensive

10. Why Patent?
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

11. After you leave home
Disclosing “Trade Secrets” to Others
Accidental
• Be aware of your surroundings
Deliberate
• Elevator pitch & enticement
11

12. After you leave home
The Next Step
• confidential business information
• trade secrets & patenting opportunities
First Things First: Use NDA / CDAs
• Non-Disclosure Agreement
• Commercial Disclosure Agreement
Risk:
• NDAs/CDAs are only as good as the integrity
of the people you’re dealing with
• legal input is essential

13. 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

14. Thank You
Dan Polonenko, PhD
Principal, Patent Agent
Tel: 604-443-7623
Email: dan.polonenko@gowlings.com
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