The process of securing allowances of patents usually takes
three, four or even five years from the priority filing date,
depending on subject matter and the jurisdictions of patent
prosecution. A great deal can change in a patent applicant's
circumstances over these extended time periods. Patent applications
with great potential value at the time of filing, may lose their
corporate and/or commercial relevance over time. For the purposes
of this article, patent life cycle management will be considered
from the perspectives of institutions, start-up companies, and
Most patent applications filed by institutions and start-up
companies are exploitative, i.e., intended to capture and protect
commercial monopolies for an invention's compositions and/or
use and/ or related methods. Institutional goals in filing patent
applications include attracting licensing interests from commercial
entities, or securing assets that can be spun-out into a company.
Start-up and early-stage companies file patent applications that
can be used as collateral for securing capital investments and/or
research funding; and/or to provide for exit strategies which may
include one or more of joint venture agreements and mergers or
acquisitions by larger, better-funded companies. Large corporations
tend to file patent applications for defensive reasons as well as
exploitative considerations, securing freedom-to-operate and
ensuring commercially valuable IP for cross-licensing in cases
where they might not have freedom-to-operate.
Formal IP audits are usually conducted as a result of a
triggering event. For institutions, a typical triggering event
might be an expression of interest from a company seeking
licensing-in of one or more patent applications. Licensing
candidates typically conduct IP audits to assess the scope and
quality of protection provided by filed patent applications, and to
identify related commercial opportunities. For start-ups and small
companies, IP audits are requisite components of the due diligence
conducted by potential investors or business partners. For a large
corporation, an IP audit trigger may relate to a licensing-in
opportunity or to an IP portfolio acquisition opportunity. A large
corporation would be responsible for conducting or managing an IP
audit of a third party's IP portfolio or an individual patent
family. In cases where a large corporation is the target of a
merger or acquisition, or alternatively, is seeking significant
financing, its IP portfolio will be scrutinized by one or more
third parties. In all of these cases, IP audits can be hectic and
chaotic. They are often complicated by paucities of essential
documents and records, the result of poor practices in
documentation and document storage over the time the IP was
developed and protection sought by patent filings and
A good business management practice for patent applicants,
regardless of whether they are institutions, start-up or small
companies, or large corporations, is to conduct and summarize
internal IP audits on a regular basis, e.g., annually. Internal IP
audits should have at least four categories of
"checklist" questions, including: (i) administrative,
(ii) prosecution status, (iii) assessment of commercial opportunity
and potential value, and (iv) commercialization status. Internal IP
audit summaries should be kept as hard copies in "IP Due
Diligence" binders and also as electronic files in secure
directories. This approach provides management with the means to
track and confirm that key administrative documents such as
invention disclosures, assignments, disclosure agreements, material
transfer agreements and licenses have been properly executed,
recorded, stored and catalogued. Regular internal audits also help
ensure that time-critical events such as patent filing deadlines,
patent office response deadlines and fee payment deadlines are
addressed in a timely manner, and that pending and issued patents
are in good standing in all jurisdictions in which they have been
For both institutions and corporate entities, regularly
scheduled internal IP audits to update: (i) the target market
relevance and conditions with respect to the IP's potential
value, and (ii) progress made toward commercialization; will
facilitate favourable third-party IP due diligence reviews.
Furthermore, information generated by these audits will facilitate
management's decision-making on commercialization strategies,
licensing strategies, and early identification of new opportunities
to develop or acquire, or alternatively, divest selected components
of IP portfolios.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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In the inaugural episode of Diversonomics, co-hosts Roberto Aburto and Sarah Willis introduce listeners to the podcast and discuss their experiences with diversity and inclusion in the legal industry. They also outline some of the obstacles the profession faces with respect to adopting new strategies and overhauling old practices.
For episode two of Diversonomics, co-hosts Roberto Aberto and Sarah Willis interview Mark Greenburgh, a partner in Gowling WLG's London office. They discuss the exciting new diversity and inclusion opportunities that have arisen since the combination of Gowlings and Wragge Lawrence Graham, as well at Gowling WLG UK's LGBT OpenHouse initiative.
Mark Greenburgh is a partner in Gowling WLG's London office, with his practice focused on employment litigation. He helps clients find solutions to workplace relationship issues and interpret the special legislation or collective agreements applicable to public sector employees.
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In episode three of Diversonomics, co-hosts Roberto Aburto and Sarah Willis interview Lorna Gavin, Gowling WLG U.K.’s head of diversity, inclusion and corporate responsibility. In their discussion, they explore the challenges and opportunities of implementing diversity and inclusion strategies across a global firm, while also detailing Gowling WLG U.K.’s various diversity networks.
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
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