Thinking Through IP Strategy

Thinking Through IP Strategy

Asad Ali Moten is a JD candidate at Osgoode Hall Law School. Here, he reports on a workshop he organized for clients and prospective clients of ventureLAB, while interning there as part of the inaugural offering of the Intellectual Property Law and Technology Intensive Program (IP Intensive) at Osgoode.

On November 9, 2011, with the assistance of IP Osgoode, Smart & Biggar, Miller Thomson, and generous Osgoode students, the ventureLAB team put on a showcase event at the Markham Convergence Centre entitled "Intellectual Property: Is It Worth Protecting?"  I had the distinct pleasure of speaking to a record turnout crowd of over 90 participants representing a variety of small businesses and start-ups.

For many of the clients I have interacted with while interning at ventureLAB, one of the challenges has been to think about intellectual property as part of a broader business strategy.  Entrepreneurs knew they had a product worth protecting, but did not know what kind of protection was warranted or how it would be obtained.  More pressingly, it was apparent that IP as a strategy intertwined with the business plan was a concept that needed to be emphasized.

The first half of the morning provided participants with a crash course in intellectual property, examining aspects of trade-marks, patents, and copyrights.  The objective of the presentation was to show participants how to compare the various intellectual property regimes and to understand how to think about them in relation to their own business.  Trade secrets and confidential information were also discussed as valuable aspects of intellectual property that could help protect growing businesses.

While that portion of the event was mostly theoretical, the Q&A with Alistair Simpson and Sally Hemming from Smart & Biggar provided participants with the opportunity to ask more pointed questions about the practical realities of IP protection.  Both Mr Simpson and Ms Hemming spoke candidly about their own experiences as IP lawyers, and the discussions they had with participants before and during the break showed that businesses really want to include IP as part of their overall strategy.  Questions revolving around provisional patents, enforcing copyrights abroad and online, and how to decide when to keep something a trade secret or pursue a patent were among the more popular concerns of participants.

Professor Giuseppina D’Agostino, Founder and Director of IP Osgoode, provided participants with a wealth of information regarding how IP Osgoode can be a resource for their intellectual property needs.  One aspect of her talk which generated a great deal of buzz was the OCE / IP Osgoode Innovation Clinic in partnership with the Ontario Centres for Excellence (OCE).  This clinic will assist start-ups and entrepreneurs to commercialise their intellectual property by working with law students, OCE, and lawyers from Torys.  Participants were also interested to hear about how they could house a law student as ‘in-house legal counsel’ for a semester through the Intellectual Property and Technology Law Intensive Program (IP Intensive), of which I am excited to be part of the inaugural class and which is responsible for my placement at ventureLAB.

The morning ended with a breakout session in which groups of participants worked together as a business team, each aided by an ‘in-house legal counsel’ in the form of a volunteer Osgoode law student.  The teams were given fictional inventions and were tasked with coming up with IP strategies to commercialise their invention.  The breakout groups spawned lively debate and discussion, as well as some fascinatingly creative business strategies for each invention.

A great turnout, and an invaluable opportunity to learn from peers – thank you to all who took part.