Her CEO Journey™: The Business Finance Podcast for Mission-Driven Women Entrepreneurs

Weekly show where my featured guests and I explore the financial and business challenges women face on the entrepreneurial journey to success. You'll hear them talk about the money side of their businesses in ways you've always wanted to know about, but wouldn't dare ask. They openly share their disappointments, failures, successes, and everything in-between as they grew sales ranging from 6 to 9 figures. Knowing where your business stands financially helps you make critical decisions with confidence. It's simply the best way to be sure you grow a business that fuels the life you want to live.

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episode 128: Demystifying Intellectual Property: IP as a Tool for Protection and Growth — The Journey of Patent Lawyer Isi Caulder (Intellectual Properties Series) [transcript]


Filing for intellectual property rights is unfamiliar terrain for some founders and CEOs. Beyond developing an IP strategy, most aren’t aware of its value and what it entails for their businesses. However, taking this precaution to safeguard your business is critical. It can not only save you money in the long run, but it can also provide you with many growth opportunities.

Isi Caulder, a patent lawyer with experience planning IP rights for businesses, joins us in today's episode. She describes how she went from being an engineer to becoming a patent lawyer and why she chose to specialize in intellectual property. Isi also goes over the types of intellectual property, their value, and how we can apply for them. Later on, we learn what it takes to develop a sound IP strategy and how this can be attractive to investors. Finally, we understand the importance of working with a patent lawyer and how their expertise can help you ensure your company’s growth. 

Tune in to the episode if you want to learn about intellectual property and how to use it to your advantage.

Here are three reasons why you should listen to the full episode:

  1. Learn about the types of intellectual property and their differences.
  2. Discover the importance of IP and employing the help of IP lawyers in empowering your company.
  3. Understand how IP can be used as an asset that can open up more opportunities for financing your business.

Episode Highlights

  • [05:58] How Isi Became a Patent Lawyer
  • [07:07] What is Intellectual Property?
  • [08:23] Other Types of IP
  • [10:48] How to Identify Your IP
  • [12:12] Advice Around IP
  • [13:24] Crafting an IP Strategy
  • [15:15] Next Steps to Filing IP
  • [19:30] Why IP is Crucial for Your Business
  • [21:35] Funding Opportunities
  • [23:55] How to Use IP for Financing
  • [26:56] Why Employment Agreements Matter
  • [29:03] Cost-Benefit Analysis for IP 
  • [33:17] Financing Using Trade Secrets
  • [34:24] Parting Advice

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Connect With Me

Ready to transform your purpose into an impactful business financial story, profit, and joy? Schedule a chat with me at any time.

Resources:

  • Visit Christina Sjahli’s website! Learn more about innovating and scaling your business through the Her CEO Journey podcast series.
  • Download the Forecasting Guide so you can create a better and improved financial forecast for your business!
  • CanExport
  • The Government of Canada’s Concierge program: CENGN 
  • Connect with Isi: LinkedIn | Email | Twitter 


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 2021-08-12  36m
 
 
00:02  Isi Caulder
It's something you
00:02
can license, it's something that
00:04
you can use as a security for a
00:04
loan. So a trademark
00:06
registration, patent
00:06
registration, industrial design
00:09
registration, we often go to the
00:09
registers and file security
00:13
interests against those
00:13
registrations or applications.
00:16
Then we release them, of course
00:16
when they're released, but it's
00:19
a very important asset to think
00:19
about. As you say, like a lot of
00:22
people don't necessarily know
00:22
what they have.
00:26  Christina Sjahli
No matter the
00:26
industry, a company's stage of
00:29
development, or a company's
00:29
internal size and structure, one
00:33
thing you will learn in this new
00:33
podcast series is that
00:37
intellectual property matters.
00:37
From my corporate experience,
00:42
intellectual property, or what
00:42
is commonly called IP, it is an
00:46
important asset for many public
00:46
company and is often utilized as
00:51
a financing strategy.
00:53
However, I haven't heard much
00:53
talk about using IP as a
00:58
financing strategy in the small
00:58
business world. The sooner
01:02
founders realize that
01:02
intellectual property matters,
01:06
the better it is for their
01:06
business. That's why I'm
01:10
curating this intellectual
01:10
property podcast series. So you,
01:13
as the founder and CEO, can
01:13
harness the value and power of
01:18
IP. As we move along from one
01:18
episode to another in this
01:22
series, you will learn a few
01:22
things: the different types of
01:26
IP that may exist in your
01:26
business, and how can you
01:29
protect this IP, the role of IP
01:29
in capital raising going global
01:35
and exit strategy, ways to
01:35
finance your business using IP
01:40
and what does the process look
01:40
like. As well as the insider
01:44
experience of female founder and
01:44
CEO in developing and financing
01:48
their company's growth using IP.
01:51
By the end of this series, you
01:51
can start figuring out what IP
01:55
you have, how you can create
01:55
your IP strategy, and maybe
01:59
consider using IP as your
01:59
capital raising strategy.
02:04
Today's episode is the first
02:04
episode of this Intellectual
02:07
Property Podcast Series. And Isi
02:07
Caulder is a partner at Bereskin
02:11
& Parr LLP. Her firm is
02:11
considered a highly regarded IP
02:16
boutique firm located in
02:16
Toronto, Canada. She is the
02:20
guest for today's episode.
02:22
In this episode, Isi shares her
02:22
in-depth knowledge of
02:25
intellectual property,
02:25
specifically patents. She also
02:29
shares the differences between
02:29
patents, trade secret,
02:32
industrial design, and
02:32
trademark, the process to
02:36
register this IPs, why it's
02:36
important for founders to think
02:40
about IP strategy from the
02:40
beginning, and how to get
02:43
started with your IP strategy.
02:43
If you are not located in
02:47
Canada, this episode is still
02:47
valuable to you, because you can
02:52
approach the local IP expert or
02:52
lawyer and ask the right
02:56
questions.
02:57
You're listening to Her CEO
02:57
Journey, the business finance
03:01
podcast for mission-driven women
03:01
entrepreneurs. I'm your host,
03:04
Christina Sjahli. If you are new
03:04
here, a big warm welcome. If we
03:10
are not connected on LinkedIn,
03:10
please reach out and say hi,
03:13
because that's where I hang out
03:13
and share my business finance
03:17
tips. If you have been listening
03:17
to this podcast for a while, and
03:21
you are a regular listener, I
03:21
want you to know I appreciate
03:25
you. My podcast won't be around
03:25
without your support. This is a
03:30
free weekly show where my guests
03:30
and I want to inspires you to
03:34
balance between mission and
03:34
profit, to create an impact in
03:38
this world, and to achieve
03:38
financial equality through your
03:42
business for good.
03:43
When you start thinking about
03:43
creating an IP strategy, it
03:47
means that you need to start
03:47
thinking about where you want to
03:51
go with your business. When this
03:51
happens when a founder starts to
03:55
shift her mindset from short
03:55
term to long term, what can
04:00  happen next is this
The
04:00
founders start to realize how
04:04
important it is to have a
04:04
forward looking view, it is no
04:09
longer sufficient to look at the
04:09
financial result that already
04:12
happened and done. We cannot
04:12
change the past. But we can
04:16
learn from the past. Learn from
04:16
what had happened and done, and
04:21
use those pieces of information
04:21
to build the future. That's what
04:26
financial forecasting is all
04:26
about.
04:29
If you are at a stage where you
04:29
think, "Hey, I need a better and
04:33
more robust financial forecast,"
04:33
but you don't know where to
04:37
start, we have a solution to
04:37
your problem. Download the
04:41
forecasting guide we have
04:41
created for you and start
04:45
creating a better and improved
04:45
financial forecast. You can find
04:49
the link to this guide in the
04:49
show notes. Let's say after
04:53
using the guide you think,
04:53
"Hmmm, this guide helps me but I
04:58
think it's better if I follow
04:58
focus my time on doing what I
05:02
really love, which is building
05:02
and growing my business. I know
05:06
business finance is important,
05:06
but I don't love it." That's
05:10
when we are here to partner with
05:10
you. We understand building a
05:14
proper and robust financial
05:14
forecast takes time,
05:18
accountability, curiosity, and
05:18
passion for your business. So
05:23
let's connect with us at
05:23
christinasjahli.com/lets-chat.
05:28
Now, let's find out Isi's CEO
05:28
journey.
05:32
Isi Caulder, welcome to Her CEO
05:32
Journey. It is a pleasure to
05:37
have you here.
05:39  Isi Caulder
Oh, it's wonderful
05:39
to be here. Thank you for asking
05:41
me.
05:42  Christina Sjahli
Before we dive
05:42
into all the details about
05:45
intellectual property, let's
05:45
start with your journey. Because
05:49
I think you have an interesting
05:49
journey, you studied
05:51
engineering, and then you
05:51
becoming a lawyer, and you're
05:54
specializing in patents. So why
05:54
don't we start there?
05:58  Isi Caulder
When I was a kid, I
05:58
had a drawer in my bedroom, it
06:02
was like a big drawer. It
06:02
basically had all sorts of
06:04
gizmos that I had broken, all
06:04
kinds of things like clocks and
06:07
radios and different things that
06:07
I had broken and taken apart. I
06:11
remember I have a vivid memory
06:11
of that drawer. So I was just
06:13
meant to go into engineering and
06:13
work in that area. And then when
06:17
I was working as an engineer, I
06:17
started to get very interested
06:20
in law and policy. I just
06:20
realized, you know, there's
06:24
another part of myself that
06:24
isn't here. I'm kind of working
06:27
as an engineer, and that's
06:27
great. But it's not my whole
06:30
self.
06:31
So I then went into law school.
06:31
I decided to go into law just
06:35
to, sort of, take on a new way
06:35
of seeing the world: learn about
06:38
contracts, and learn about
06:38
relationships, and legal
06:41
relationships and obligations,
06:41
and all the systems that are
06:44
there that are legal, which are
06:44
pretty fascinating. But then I
06:47
realized I missed engineering.
06:47
So that's why I ended up in
06:49
patent law, because I didn't
06:49
want to leave the technology
06:52
behind. I love working with
06:52
startups and companies that are
06:55
developing technology. But I get
06:55
to learn about all these
06:58
different areas, and help them
06:58
protect their IP.
07:02  Christina Sjahli
Let's explain
07:02
to my audience, what is
07:05
intellectual property?
07:07  Isi Caulder
I like to just sort
07:07
of demystify IP and empower
07:10
people around IP by just saying,
07:10
"Look there are these buckets of
07:13
IP. They're all pretty
07:13
interesting. They all apply in
07:16
different ways to your
07:16
business." So the first one, of
07:19
course, you know, I really love
07:19
patents, that's my core area,
07:22
because that is when you're
07:22
protecting the functionality of
07:25
something. So how do we protect
07:25
that fundamental technology,
07:28
that fundamental part of it,
07:28
that you would like to prevent
07:31
someone else from doing? And
07:31
that's the power of patents. You
07:34
can stop competitors from doing
07:34
the exact same thing, from
07:38
following those steps and having
07:38
that functionality.
07:40
I'm the co-head of the AI group
07:40
at my firm. So I work with a lot
07:44
of mostly Toronto-based AI
07:44
companies. So I think a lot of
07:48
the complexity can come out of
07:48
the subject matter that is at
07:51
heart of the protection. But in
07:51
terms of the legal side, patents
07:55
can also be very complicated
07:55
because they have different
07:58
rules in different countries. So
07:58
there's US patent law, there's
08:01
Canadian patent law, there's
08:01
European patent law. And while
08:04
they have the same fundamental
08:04
basics to them: something needs
08:06
to be new and non-obvious for it
08:06
to be patentable, they have,
08:10
sort of, the basic requirements
08:10
also utility and subject matter.
08:13
But each country will have its
08:13
own particular rules and case
08:17
law around what qualifies to be
08:17
patentable, for example, or what
08:20
qualifies as patent
08:20
infringement.
08:22
There are other things like
08:22
branding, which is trademarks.
08:25
Say you're Xerox or you're
08:25
Coca-Cola, you have a brand on
08:28
your product; you have a company
08:28
name. It's pretty
08:30
straightforward. Nobody should
08:30
be able to get too close to
08:33
that. There's a lot of subtlety
08:33
in terms of how you determine
08:36
whether somebody is using a
08:36
trademark that's too close to
08:39
yours. Are they causing consumer
08:39
confusion? All the tests around
08:43
how confused is the consumer in
08:43
terms of the source of the
08:47
products or services. That's at
08:47
the core of trademarks?
08:50
Essentially, where did this box
08:50
of salt come from? Where did the
08:54
box of salt come from? Who
08:54
produced this salt, and what
08:56
quality might it be given that I
08:56
know the source of the box of
09:00
salt. So I would say trademarks
09:00
definitely comes up along as
09:04
well in terms of the tests that
09:04
are required and the evidence
09:06
that's required to substantiate
09:06
consumer confusion and trademark
09:10
infringement.
09:11
There are other things like
09:11
copyright. So if you have a
09:13
painting or you have a film, you
09:13
can say, "Hey, you're copying my
09:18
art. You're copying my film.
09:18
That is unauthorized copyright
09:21
infringement." Then there are
09:21
things like trade secrets that
09:24
you can create by just keeping
09:24
something secret. You can have a
09:27
trade secret that can be lost,
09:27
and you can have some legal
09:30
recourse to the person who
09:30
breaks the trade secret.
09:33
Then there's, finally there's
09:33
industrial design, which is
09:36
really about the look of
09:36
something. So if you have a car,
09:39
or you have a chair, or you have
09:39
a watch, there's an
09:41
ornamentation to that product
09:41
that you can protect as an
09:44
industrial design. I don't wanna
09:44
say the poor cousin of patents,
09:47
but it is related to patents.
09:47
They usually call in the US,
09:50
they call what we call patents,
09:50
utility patents. So the
09:53
functionality of something. But
09:53
then there's also a design
09:56
patent. We call them industrial
09:56
designs here in Canada, but
09:59
industrial designs really are
09:59
about, again, the ornamentation
10:02
the look of something.
10:04
When you're filing a design
10:04
application, design patent
10:06
application, you're filing
10:06
figures, so you're filing the
10:09
six different views, maybe a
10:09
perspective view of the object
10:12
to show it from different
10:12
perspectives, and get an idea of
10:15
if somebody was going to
10:15
infringe this, they would make a
10:18
tire essentially, or a chair
10:18
that has the same angles between
10:22
these different elements, and
10:22
looks looks like this from these
10:25
different angles. So industrial
10:25
design, there obviously is case
10:28
law. There are rules and
10:28
statutes and all of that behind
10:32
it. But they don't tend to be as
10:32
complicated as you see with
10:34
patents or with trademarks.
10:36  Christina Sjahli
For business
10:36
owners out there. How can they
10:39
identify? What are the steps for
10:39
business owner to identify the
10:44
type of IP they have in their
10:44
business?
10:48  Isi Caulder
So the question is,
10:48
what does it your company do
10:50
best? What is really your area
10:50
of speciality? Why would your
10:53
customers choose your company
10:53
instead of the competition? What
10:56
is your delta in the
10:56
marketplace? Then how do you
10:59
distinguish your company from
10:59
competitors? If you ask those
11:02
three questions, typically,
11:02
things will fall out of those
11:05
questions that will let you
11:05
know, lead you to realize, "Oh,
11:08
our difference really is the
11:08
technology that we're using.
11:11
We're using software, or we're
11:11
using something, we're selling
11:15
something mechanical that is
11:15
really, really interesting, that
11:18
solves a problem in a way that
11:18
that hasn't been solved before."
11:21
Or "They would distinguish our
11:21
company because of our name. We
11:25
have this fantastic name." "We
11:25
have this wonderful logo." Or
11:28
"We're very focused on our
11:28
branding." That's going to be
11:30
really important for your
11:30
business. The same with
11:32
industrial design, like "Maybe
11:32
somebody would choose our
11:35
product because it looks so
11:35
good." Then out of that
11:37
discussion would fall well,
11:37
industrial design is probably
11:40
the thing, because there's an
11:40
appearance, there's a there's a
11:43
look to it that's so attractive,
11:43
people just pull it off the
11:45
shelf, because they want to have
11:45
that in their home. So I think
11:47
those questions are pretty
11:47
powerful, actually way to we've
11:50
started to understand where you
11:50
can fit into these buckets of
11:53
IP.
11:54  Christina Sjahli
What are the
11:54
common misconception about IP
11:57
that lead a business owner not
11:57
realizing they actually have IP,
12:02
and then they can use it to
12:02
basically monetize this? It's an
12:07
asset, technically on the
12:07
balance sheet, and then they can
12:09
use this for financing purpose.
12:12  Isi Caulder
An IP is an asset.
12:12
I mean, at the end of the day,
12:15
it is something you can buy and
12:15
sell. It's something you can
12:18
license, it's something that you
12:18
can use as a security for a
12:20
loan. So a trademark
12:20
registration, a patent
12:23
registration, industrial design
12:23
registration, we often go to the
12:26
registers and file security
12:26
interests against those
12:30
registrations or applications.
12:30
Then we release them, of course,
12:33
when they're released. But it's
12:33
a very important asset to think
12:35
about. As you say, like a lot of
12:35
people don't necessarily know
12:38
what they have.
12:39
A lot of people, especially
12:39
inventors, who are inventing
12:42
things, there'll be very, very
12:42
hard on themselves, because
12:45
they're smart, and they're
12:45
coming up with new things. But
12:47
they don't think it's
12:47
particularly new. It's like they
12:49
don't think it's particularly
12:49
non-obvious. These are sort of
12:52
the tests for patentability, but
12:52
you have to have them take a
12:55
look a little harder. "Look, you
12:55
have a difference in the
12:57
marketplace, you have something
12:57
unique that people are coming to
13:00
you for, take a look at it and
13:00
see, you probably have done
13:04
something new, you probably have
13:04
done something that's
13:06
non-obvious. It doesn't have to
13:06
be a huge eureka moment, it just
13:10
has to be different." So as I
13:10
always say it has to be new, and
13:13
it has to be different. Let's
13:13
take a closer look at the
13:15
difference.
13:16  Christina Sjahli
So are you
13:16
saying that the common
13:18
misconception out there is just
13:18
education, meaning that people
13:21
don't understand that IP is
13:21
asset?
13:24  Isi Caulder
Right. Part of it
13:24
is just awareness. Then also
13:26
empowerment to sort of say,
13:26
look, it is not rocket science.
13:29
There are these different
13:29
buckets of IP, and they cover
13:31
different aspects of a business.
13:31
Most businesses will have a
13:34
house name, they'll have a
13:34
company name, a lot of them will
13:37
have product names. Those are
13:37
all brands; those are all
13:40
protectable. They identify you
13:40
as the source. It is really
13:43
worth keeping, making sure yes,
13:43
you have the domain names, you
13:46
may register the domain names.
13:46
You may be looking, doing the
13:49
nuanced search, making sure you
13:49
can get the corporate name,
13:51
that's great. But take the next
13:51
step and start thinking about
13:54
trademark protection. So that
13:54
you have a registration to fall
13:57
back on in Canada, maybe the US
13:57
if you're if you're looking at
14:00
that as a marketplace, most
14:00
Canadian companies are.
14:02
Trademarks is something that I
14:02
think is applicable to pretty
14:05
well, all businesses. It can be
14:05
used as a security for a loan.
14:09
It's going to be something
14:09
investors are going to ask. It's
14:11
like, "Well, have you protected
14:11
your name? Have you protected
14:13
your company name? What if
14:13
somebody comes into the country
14:16
with the same name, your
14:16
consumers would be confused.
14:18
Have you taken steps to protect
14:18
that?"
14:20
Then of course, there's the you
14:20
know, industrial design,
14:23
designs, also customer lists,
14:23
things like that, that you know,
14:26
NDAs can be used to protect
14:26
confidential information for a
14:29
company. Customer lists can be
14:29
extremely valuable. All sorts of
14:33
business know-how, all sorts of
14:33
business processes that you
14:35
might be using. You could take
14:35
some steps to protect them as a
14:38
trade secret and have that as
14:38
part of your IP strategy. I
14:41
think just knowing that you can
14:41
have an IP strategy is very
14:44
powerful and starting to think
14:44
longer term in terms of, "What
14:49
do we own? What have we created?
14:49
And let's protect some of this."
14:52
Investors and partners will be
14:52
very appreciative that you've
14:56
taken those steps and taken that
14:56
time to reflect on on your IP.
14:59  Christina Sjahli
So going back
14:59
to the first thing that you
15:02
said, ask the three questions
15:02
that you share earlier. Then the
15:06
second thing realizing that you
15:06
actually may have an IP. So once
15:11
these business owners start
15:11
thinking, "Okay, I may have an
15:14
IP here." What would be the next
15:14
step?
15:17  Isi Caulder
I think, which is
15:17
very important for business
15:18
owners to understand is how do
15:18
you mitigate your risks, your
15:21
business risks with IP. Because
15:21
IP can be there to, kind of,
15:25
help you mitigate and prevent
15:25
you from getting into a scrap
15:29
with a competitor, or losing
15:29
market share, or losing patent
15:32
rights, which you may have. Most
15:32
IP professionals are like me. I
15:36
never charge for initial
15:36
consultations, and I'll have 2,
15:39
3, 4 calls with somebody and not
15:39
charge them unless we actually
15:43
come up with a mandate,
15:43
something that they need done.
15:45
So a lot of people are like me,
15:45
I would imagine. Don't feel, and
15:49
I think this is a big message,
15:49
I've heard this actually in
15:51
different forums, different
15:51
business owner forums around IP,
15:55
they're afraid to call a lawyer.
15:55
They're afraid to pick up the
15:57
phone because they don't want to
15:57
be charged.
15:59
I would say to that, there are a
15:59
lot of lawyers like myself
16:01
working at firms, typically,
16:01
through accelerators, if you can
16:05
go to a local accelerator, and
16:05
get access to an IP lawyer
16:08
through an accelerator, you can
16:08
have the assurance that
16:11
everybody knows why they're
16:11
there. They're there to help
16:13
startups. They're there to help
16:13
companies. They're not going to
16:15
be charging you. That's not why
16:15
they're there. They're there to
16:18
mentor; they're there to develop
16:18
relationships. That would be a
16:21
very good place to go and get
16:21
connected with an IP lawyer and
16:25
ask these questions. The sooner
16:25
the better, especially when it
16:27
comes to patents and industrial
16:27
design, because there is a time
16:30
limit on those.
16:31  Christina Sjahli
Okay. So when
16:31
you say time limit, what does
16:33
that mean? Because you repeated
16:33
that twice now.
16:37  Isi Caulder
I know, that's the
16:37
big warning we always have,
16:39  which is
Don't publicly
16:39
disclose your technology before
16:42
you talk to somebody about
16:42
patents or industrial design.
16:45
Because once it's in the public
16:45
domain, in a lot of countries
16:48
you can't get valid patent
16:48
rights. Like even if you did get
16:50
a patent, it could be
16:50
invalidated very easily by just
16:53
saying, "Well, this person had
16:53
it at a trade show." When it
16:55
comes to copyright, copyright
16:55
automatically, sort of, attaches
16:58
to the work. So there's nothing
16:58
much you need to do other than
17:02
provide proper copyright notice.
17:02
But there isn't anything you
17:04
need to really do. You can
17:04
register if you want to. But
17:07
there's no real time limit on
17:07
that. It just happens under
17:10
under the Berne Convention, it
17:10
just happens.
17:12
Trademarks, again, they're sort
17:12
of as I mentioned, they're sort
17:14
of just common law rights that
17:14
happen just from using it. You
17:17
can register, it's good to get
17:17
it registered in a timely way.
17:21
But on the patent industrial
17:21
side things, once cat is out of
17:24
the bag, you may try to rely on
17:24
some grace periods that exist,
17:28
but once those are used up, then
17:28
you can't get patent protection
17:31
for something that's been
17:31
publicly disclosed. That's, sort
17:34
of, at the most urgent end of
17:34
inquiry, I would say.
17:38  Christina Sjahli
But some
17:38
people because like you said,
17:41
they may not realize they have
17:41
something that they need to
17:44
patent it, right? Like they
17:44
don't realize that they have to
17:47
start the process. So they may
17:47
already say something in public.
17:53  Isi Caulder
Yes, exactly. For
17:53
sure. That happens all the time.
17:56
Then we say okay, grace period
17:56
save the day. Sometimes the
17:59
grace period saves the day. You
17:59
have another year in Canada, and
18:02
the US after public disclosure,
18:02
as the inventor, the source of
18:06
the disclosure to file an
18:06
application, and you're still
18:08
okay. But you won't be okay in
18:08
Europe. If you've had a public
18:12
disclosure, a conversation with
18:12
somebody without an NDA, or
18:16
trade show, or a publication
18:16
that you're putting it on the
18:18
website, or in the US, even just
18:18
a sale to a customer, a sale
18:22
will start a clock starting, a
18:22
one year clock starting. So you
18:25
have to watch these these
18:25
timeframes.
18:27
But you're right, I mean, people
18:27
may not be aware, and then they
18:29
find out and it's a bit too
18:29
late. So part of what we do as
18:32
IP professionals, and it's our
18:32
duty, really, to go out and to
18:35
communicate. Of course, the
18:35
Canadian Patent Office
18:37
themselves, I mean, they have a
18:37
great website at C-I-P-O, CIPO.
18:41
They have a wonderful website
18:41
with databases that you can go
18:44
and search. You can, sort of,
18:44
educate yourself about the
18:47
different kinds of IP and the
18:47
timelines that are associated
18:50
with the different kinds too, so
18:50
there's a wealth of information
18:53
there. But it is a duty to get
18:53
the word out so that people can
18:56
sort of say, "Okay, before you
18:56
go to market, as you're
18:59
developing your product, before
18:59
you get it out there, let's take
19:02
a moment to reflect and just say
19:02
okay, before we before we go,
19:06
let's just see if there are any
19:06
steps we should be taking to
19:09
file some applications for
19:09
patents or designs or
19:12
trademarks." It's a good time to
19:12
reflect.
19:14  Christina Sjahli
Do you think
19:14
it's more applicable, for patent
19:19
are these more applicable to
19:19
product-based business and
19:22
technology-based business? In
19:22
comparison to service-based?
19:26
Have you seen any service-based
19:26
that may need patent?
19:30  Isi Caulder
Absolutely. I mean,
19:30
I think with AI coming in the
19:32
way it is and software being
19:32
such a important part of a
19:36
service company. I mean
19:36
companies are using software
19:39
tools. They may be third-party
19:39
tools, so that it may not be
19:43
their IP, but there may be some
19:43
IP issues there. But service
19:46
companies are certainly using,
19:46
they're automating a lot of
19:49
their services, automating a lot
19:49
of what they offer. There can be
19:52
quite a bit of patent questions
19:52
or patent possibilities with the
19:56
tools that they're developing to
19:56
provide services. So there can
19:59
be something there as well.
20:01
I try to simplify it for people.
20:01
But I just, I came across some
20:05
interesting statistics back a
20:05
couple of years from an IP
20:08
Canada report from the Science
20:08
and Economic Development,
20:11
Innovation, Science, and
20:11
Economic Development people. I
20:14
think IP is really important,
20:14
especially for SMEs. They did a
20:18
really interesting study and I
20:18
just wanted to mention this, but
20:21
you know, SMEs holding formal IP
20:21
are 1.6 more likely to
20:24
experience high growth. So that
20:24
means more than 20% a year
20:27
growth. They're two times more
20:27
likely to innovate, three times
20:31
more likely to expand
20:31
domestically, and three times
20:33
more likely to expand
20:33
internationally.
20:35
So I think people, in
20:35
government, I think a lot of
20:38
people are realizing how
20:38
important it is for people, for
20:41
us to demystify IP, to simplify
20:41
IP, and really empower SMEs and
20:47
individuals to think, "Okay,
20:47
what do I possibly have from an
20:52
IP point of view? and if I
20:52
register a trademark, if I
20:54
register a patent that is
20:54
correlated with these signs of
20:58
success" that I just mentioned.
20:58
So I really think it is a
21:01
compelling and a very real
21:01
opportunity for companies to
21:05
just take, have a coffee chat,
21:05
have a coffee chat with an IP
21:08
lawyer, and again, the
21:08
accelerators are a great place
21:10
to go to talk to people who are
21:10
available and will not be
21:14
charging, will not create a
21:14
negative experience. I think
21:17
there is that fear. I would
21:17
really encourage your listeners
21:20
to overcome that fear, go and
21:20
find somebody to speak to that
21:24
will welcome you and give you
21:24
some some information that you
21:27
might find very useful. I just
21:27
think it's really important to
21:30
get the word out, get people
21:30
empowered. there are also a lot
21:32
of funding opportunities that
21:32
are available.
21:35  Christina Sjahli
Can you talk
21:35
about that funding program then
21:37
please, because I think that's
21:37
gonna be very useful.
21:41  Isi Caulder
Well, there are a
21:41
number of different funding
21:42
programs. I actually have
21:42
another map, which I would be
21:45
happy if you shared with your
21:45
listeners. On that map, there's
21:48
the list of government programs
21:48
that can support research, who
21:51
can also support IP capture. So
21:51
in that map, for example, I have
21:55
incubators and accelerators
21:55
listed there. I have the RIC
21:58
Centre, ventureLAB, MaRS,
21:58
iomedical Bluestones, and all
22:02
inds of wonderful places, R&D,
22:02
P funding opportunities.
22:05
So the CanExport program is
22:05
quite promising. They have a lot
22:05
So for example, there's SHRED
22:05
redits, which are tax credits
22:08
hat can be used for a business
22:08
o get refunds, or getting
22:12
redits rather, on the IP
22:12
expenditures. But there's
22:15
something that's really quite
22:15
that my clients are have been
22:18
using in good numbers, this
22:18
program called CanExport S
22:22
Es. And it's, basically, small
22:22
nd medium sized companies may ac
22:25
ess up to $75,000 for int
22:25
rnational market dev
22:28
lopment, with 75% of the cos
22:28
covered. I can say a number
22:32
f my clients have been able to
22:32
cover significant amount of thei
22:36
IP costs under this program
22:42
of people available to, in the
22:42
different industry areas, go to
22:46
the website and find specific
22:46
people dedicated to kind of
22:50
coach you through the process of
22:50
applying for this. This
22:52
essentially covers SMEs that
22:52
want to go into international
22:56
marketplaces. So, it may not be
22:56
appropriate for everyone, of
22:59
course. But if you have a
22:59
partner in another country, or
23:02
you have an association that
23:02
you're working with, it is worth
23:05
exploring this opportunity, for
23:05
example, and there are others.
23:08
There are other loans. There's a
23:08
service, and I believe it's
23:11
still going it's called
23:11
Government Concierge Service. I
23:15
know, and there are places like
23:15
that online where you can go and
23:18
just get a list of funding
23:18
opportunities, pick up the phone
23:20
and have a conversation with
23:20
somebody about, what your
23:24
business is and how you may fit
23:24
into some of these opportunities
23:27
in Canada. We're very lucky to
23:27
be here because our government
23:30
is supporting a lot of these
23:30
efforts, and innovation is
23:34
definitely at the heart of what
23:34
they're trying to incentivize.
23:36  Christina Sjahli
When business
23:36
owners are thinking and they
23:40
realize, "Okay, I have an IP and
23:40
I know IP is an asset." What are
23:44
the step? Or what do they need
23:44
to do to have it ready, so they
23:51
can use their IP as financing
23:51
tool or financing asset?
23:55  Isi Caulder
This is something
23:55
that we like to tell our clients
23:57
for sure and people learning
23:57
about IP and prospects. Keep
24:01
your IP ready for investment.
24:01
The first thing I would say is
24:04  have an inventory
a current
24:04
list of all the IP that you own
24:07
or that you license. Have an
24:07
idea of, essentially, what
24:11
registrations do we have? What
24:11
registrations have we received?
24:14
What applications do we have in
24:14
different offices? And then you
24:18
would also take a look and say,
24:18
"Okay, let's make sure we have
24:20
the inventors and the authors."
24:20
So inventors of any patents.
24:24
Then the authors of any works
24:24
that might be covered by
24:26
copyright, make sure we
24:26
understand where these things
24:30
came from, the people that
24:30
created them, and make sure we
24:32
have agreements from these
24:32
individuals to the company, so
24:36
that the company is the clear
24:36
owner of this IP. So you want to
24:40
want to secure the ownership of
24:40
the IP.
24:42
We do a lot of due diligence. In
24:42
some cases, assignments have
24:46
gone missing, assignments were
24:46
never made. There's employment
24:49
agreements but it's a bit vague
24:49
as to what's covered. So there
24:52
tends to be a bit of a cleanup
24:52
process when we're doing due
24:54
diligence. So it's really good
24:54
to understand if you can right
24:58
at the beginning, let's keep
24:58
record when it comes to who
25:01
created the IP. Let's put
25:01
obligations on people to assign
25:04
it to the company. Let's look at
25:04
any other agreements we have
25:07
with other companies or other
25:07
partners, or financial financial
25:11
institutions to understand are
25:11
there security interests in the
25:14
IP, and to make sure that we can
25:14
present the IP free and clear.
25:18
The other thing to think about
25:18
is maybe freedom to operate type
25:22
analysis, and you know, that
25:22
might be appropriate. It's not
25:25
often that necessary, but
25:25
sometimes investors really want
25:28
to see that you've done some due
25:28
diligence in terms of the
25:30
landscape. Have you done your
25:30
trademark searches? That's
25:33
normally what we would do at the
25:33
beginning of a process of a
25:36
trademark application. So make
25:36
sure you have copies of those
25:39
searches. Ask those questions.
25:41
Also, on the patent side, have
25:41
you done patent searches before
25:44
you filed your applications?
25:44
Yes, we did some due diligence.
25:47
we did some searching. we didn't
25:47
find anything, specifically what
25:50
we're doing. So we're confident
25:50
that we have some good
25:53
applications lodged, that sort
25:53
of due diligence in the
25:56
background.
25:57
Then also just be ready to
25:57
articulate an IP plan. I was
26:00
just writing one up for a client
26:00
today in terms of what are the
26:03
industry areas that you're going
26:03
into? What areas do you want to
26:06
be competitive in? What are your
26:06
business goals? And how do you
26:09
align them to your IP goals?
26:09
Okay, we have these products,
26:13
we're really going to invest in
26:13
these products. So let's make
26:16
sure we have patents, we have
26:16
industrial designs, we have the
26:19
names we're going to use for
26:19
these products. Let's make sure
26:22
we have those in place. Let's
26:22
look forward maybe a few years,
26:25
what are we thinking? What other
26:25
industries are we thinking we
26:28
might go into? What are the
26:28
countries we might go into? And
26:30
have that in an IP plan that you
26:30
can point to, you can provide to
26:35
an investor, and you can tell
26:35
them what your thinking is
26:37
around IP. So all these pieces
26:37
are very important in terms of
26:41
being ready. These are all
26:41
things that you can do to be
26:44
ready.
26:45  Christina Sjahli
Earlier, you
26:45
mentioned that as part of the
26:47
process, there may be like
26:47
missing employment agreement.
26:51
I'm curious why employment
26:51
agreement matters in this
26:55
process?
26:56  Isi Caulder
Right. Well,
26:56
employment agreements are
26:57
important for many reasons, but
26:57
one of them is IP. So generally
27:01
speaking, when it comes to, from
27:01
the patent perspective, because
27:03
I see this all the time, we have
27:03
employment agreements in place,
27:06
that say, "Okay, anything a
27:06
employee invents in the course
27:09
of their business, they agree to
27:09
assign to the company." Great,
27:13
okay, that's in the employment
27:13
agreement. Hopefully, there is
27:16
an employment agreement.
27:16
Sometimes there aren't. But
27:18
generally there is. Then when it
27:18
comes to the particular
27:21
invention that the person has
27:21
made, we had actually prepared a
27:24
separate assignment,
27:24
confirmatory assignment just to
27:27
for the paperwork, because we
27:27
don't really want to file the
27:30
employment agreement at the
27:30
patent office. So we prepare an
27:33
assignment that confirms the
27:33
obligation and assigns this
27:36
particular invention to the
27:36
company, and then that gets
27:38
filed at the patent office. That
27:38
is a nicely done with a bow on
27:41
top assignment of the interest
27:41
to the company.
27:44  Christina Sjahli
Isi, you
27:44
mentioned that when you are
27:44
So any investor would come along
27:44
and say, "Oh, good, you have the
27:47
employment agreement, check.
27:47
You've got the confirmatory
27:50
trying to collect all this IP,
27:50
and then you need to register
27:50
assignments to the company,
27:50
check." That is investment
27:53
ready. So there are these two
27:53
layers that that we like to see
27:56
in place. I see this all the
27:56
time with student teams. So I
27:59
mentor at a few different places
27:59
in Toronto here, at U of T and
28:03
at Ryerson. I see student teams,
28:03
sometimes, they're coming out of
28:06
university and they're forming,
28:06
they're working together, but
28:07
it, there is a cost to it. How
28:07
can a business owner measure the
28:09
they're all individuals, and
28:09
they haven't quite figured out
28:12
that they need to incorporate a
28:12
company. Now they're hitting the
28:15
real world, but they're still
28:15
really, they're really just
28:17
working at it. But the reality
28:17
is, it's very important to have
28:20
a company that gathers all the
28:20
IP that's created by the people
28:24
associated with the company. So,
28:24
independent contractors, the
28:28
employees, all these different
28:28
parties, where IP could be
28:31
generated, it's very important
28:31
to have the agreements in place
28:34
and to have an entity that all
28:34
those pieces of IP can be
28:38
brought together.
28:53
cost and the benefit, which one
28:53
is worthy to basically move
28:57
forward and then maybe later on,
28:57
this is going to be an asset
29:01
that I can use for future
29:01
financing?
29:03  Isi Caulder
Mm hmm, exactly. So
29:03
how do you discriminate? How do
29:06
you really get to the point
29:06
where it's like, yes, this is
29:08
worth investing in, and yes,
29:08
this is not worth investing in.
29:11
That's a very good point. This
29:11
is really part of the
29:13
conversation that a company
29:13
wants to have a strategy, an IP
29:16
strategy. A law firm and IP
29:16
lawyer shouldn't just be about
29:20
registering things, right? And
29:20
sending a reporting letters. An
29:22
IP lawyer should be an advisor,
29:22
a trusted advisor with their
29:26
clients, sitting in the
29:26
meetings, not charging
29:29
necessarily right, just sitting
29:29
in the meetings, understanding
29:31
the business perspectives, and
29:31
helping them develop an IP plan,
29:35
which will contain, potentially,
29:35
some filings and some different
29:38
actions and different
29:38
agreements.
29:39
But at the end of the day, the
29:39
IP plan is so important and an
29:42
IP lawyer should be helping a
29:42
company understand, what exactly
29:46
is the right approach? In that
29:46
discussion, you would talk about
29:50
what is your market potential?
29:50
Are you thinking, how many
29:53
millions of dollars will this
29:53
make? Or how many hundreds of
29:56
1000s of dollars will this make?
29:56
And does it merit a $2,000
30:00
investment in the trademark? It
30:00
probably does, right? If it's
30:02
hundreds of 1000s of dollars, it
30:02
probably merits a $2,000 spend
30:06
for a trademark. If it's
30:06
hundreds of 1000s of dollars,
30:09
will it really merit a 40 to
30:09
$50,000 spend for a patent
30:12
application registration in
30:12
Canada and the US, for example?
30:16
Because you can look at those
30:16
sorts of costs on the patent
30:19
side, 40, to 50, even 60, you
30:19
know, to get North American
30:22
coverage, more to get European
30:22
coverage, in addition, and that
30:26
sort of thing.
30:26
So you really look at the
30:26
dollars that are contemplated
30:30
and then the dollars to secure
30:30
it. To some degree, you have to
30:33
take a bit of a risk. But if you
30:33
have a hunch that this market is
30:37
a very important one in the
30:37
marketplace, and the potential
30:39
for this product is a very
30:39
important potential, securing it
30:43
with an IP filing of some sort,
30:43
whether it's industrial design,
30:46
or patents, or trademarks, you
30:46
can have those discussions and
30:49
you can say, "Is 5%, is 2%, a
30:49
reasonable investment for this
30:54
potential market and this
30:54
potential profit?" Keeping in
30:57
mind that it is competitive, and
30:57
that your competitors are going
31:00
to try to copy you. You'll have
31:00
to be very careful with your
31:04
manufacturing processes.
31:06
A client of mine makes a
31:06
wonderful product that reduces
31:10
tremors, and his approach to
31:10
manufacturing is not to send the
31:14
whole thing to the manufacturer
31:14
overseas, but to send a piece to
31:17
one company, another piece to
31:17
another company. Now there are
31:20
all these strategies that you
31:20
can take that they are very
31:23
aware of the value of your IP,
31:23
that can really save your
31:27
company huge losses and huge
31:27
competition, and huge loss of
31:31
revenue over time. So I would
31:31
say IP can be a really, really
31:36
strategic tool.
31:37
As you'd say, you don't want to
31:37
protect everything and you don't
31:40
want to protect everything in
31:40
every country. You can be
31:43
strategic about it. You can say,
31:43
"Look, we're really focused on
31:45
North America. We're just gonna
31:45
focus on Canada and the US." Or
31:48
you could say, maybe some other
31:48
key countries that makes sense.
31:52
But you can take the 80 20 rule
31:52
and say, "Look, let's just
31:55
protect the core; let's protect
31:55
maybe a very important
31:57
improvement. But we don't need
31:57
to protect everything in every
32:00
country. We can really be
32:00
strategic about it."
32:02  Christina Sjahli
Now, is it
32:02
possible as part of the strategy
32:06
to go to the bank and basically
32:06
saying, "Hey, you know, what,
32:09
like, I don't have the patent
32:09
yet, but I have this trade
32:12
secret and then I have this
32:12
industrial design. Can I use
32:15
this for financing?"
32:17  Isi Caulder
Right. Well, that
32:17
sounds reasonable. Like you can
32:19
say, look, as I always say,
32:19
patents are always started out
32:22
as trade secrets. So your IP
32:22
strategy could be, let's just
32:25
keep this secret for a while. We
32:25
have employment agreements that
32:28
require everyone involved in the
32:28
company to keep the secret and
32:31
you have locked filing cabinets.
32:31
You take other measures. Trade
32:35
secret can be a very important
32:35
IP strategy. But the thing is,
32:38
you can't, when you go to the
32:38
bank, I'm not sure exactly what
32:41
you say. You say, "Look, we are
32:41
keeping our IP as a trade
32:44
secret, we have these measures."
32:44
I mean, that can be interesting,
32:47
but they can't really register
32:47
security interest against a
32:52
trade secret. There's no way of
32:52
really doing that.
32:54
But as you say, you could start
32:54
to look at industrial design
32:57
protection, which is not as
32:57
expensive as patents. If there's
33:00
a particular look, a consumer
33:00
good that has an appearance,
33:02
surely you can capture that.
33:02
There is a time limit to
33:05
protecting your patents. So
33:05
once, if you're not keeping your
33:08
patent confidential, and of
33:08
course, there's more prior art
33:10
that's building up as well,
33:10
right. I mean, the other side of
33:13
a timely filing on the patent
33:13
side is that you get ahead of
33:17
competitor filings. You get
33:17
ahead of prior art that's
33:19
popping up every day, that's
33:19
publishing every day in the
33:22
patent office. So there is an
33:22
urgency, and I always say this
33:25
to my colleagues when we're
33:25
working for clients on the
33:27
patent side, "We need to
33:27
practice with urgency. We need
33:30
to get our clients as early a
33:30
filing date for good subject
33:34
matter, for well-written subject
33:34
matter as soon as we possibly
33:37
can." So there is an urgency to
33:37
the patent filing.
33:40
But as you say, you don't need
33:40
to have a registered patent,
33:43
necessarily, you can have an
33:43
application with a patent search
33:46
that you've done ahead of time.
33:46
So those two things together can
33:49
be very powerful. Like, we did a
33:49
patent search. We didn't find
33:52
anything, bang on. We filed a
33:52
good application with a good
33:54
firm. Yes, we're waiting because
33:54
everyone has to wait. We can
33:58
accelerate the examination,
33:58
maybe in some cases, if it makes
34:01
sense. But for the most part
34:01
that will be looked upon very
34:05
favorably by a number of
34:05
parties, because you've taken
34:08
steps to protect your IP. Now
34:08
you're just waiting the
34:11
administrative delay of
34:11
examination.
34:14  Christina Sjahli
I know this
34:14
topic is big, and I wish we have
34:17
more time, but I know we don't.
34:17
So is there anything else that
34:21
you want to share with my
34:21
audience that we haven't cover?
34:24  Isi Caulder
Your questions have
34:24
been really wonderful and
34:26
they've they've definitely taken
34:26
us around a lot of the issues. I
34:29
mean, I think at the end of the
34:29
day, those three questions are
34:32
really important just to sort of
34:32
say, let's take a look at our
34:35
difference. The difference that
34:35
we present in the marketplace.
34:38
What makes us tick? What makes
34:38
us tick as a business? Then,
34:42
let's take let's think about all
34:42
the different buckets of IP. So
34:45
is there any functionality? Is
34:45
there any software? Are there
34:47
any devices that we've created?
34:47
Is there any look? Or you know,
34:51
when it goes on a shelf, does it
34:51
look really attractive? Is there
34:54  some industrial design aspect
our brands, what we call
34:57
ourselves, what we call the
34:57
products, are those clear? Have
35:00
we done the searches? Are we
35:00
going to file some
35:02
registrations?
35:03  Copyright
have we put our
35:03
copyright notice on our website?
35:05
Have we put copyright notice on
35:05
our on our different things that
35:09
might have copyright in them?
35:09
Then, trade secret: do we have a
35:12
way that we, what are our
35:12
agreements like? Do we have NDA
35:15
with customers and third
35:15
parties? Do we have employment
35:18
agreements to maintain
35:18
confidential information? So I
35:21
think a company can really go
35:21
through that relatively
35:25
straightforwardly and ask these
35:25
questions, have a dialogue and
35:28
then see, maybe there's some
35:28
steps that need to be taken.
35:30  Christina Sjahli
If my audience
35:30
needs your expertise, Isi, where
35:34
can people find you?
35:35  Isi Caulder
Oh, you can find me
35:35
at I think
35:38
icaulder@bereskinparr.com is my
35:38
email at my law firm. And I'm
35:43
also on Twitter. My handle is
35:43
@isicaulder so you can find me
35:46
on Twitter, and LinkedIn as
35:46
well. Happy to set up a time to
35:50
talk and just walk through some
35:50
of the questions that, things
35:53
that we talked about here and
35:53
see how it applies to your
35:56
business.
35:56  Christina Sjahli
Isi, thank you
35:56
so much for being here.
35:58  Isi Caulder
Very welcome. It
35:58
was a real pleasure. Thank you
36:01
so much.
36:03  Christina Sjahli
That brings us
36:03
to the end of another show.
36:06
Thank you so much for listening
36:06
to another episode of Her CEO
36:10
Journey, the business finance
36:10
podcast for women entrepreneurs.
36:14
If you want to create a
36:14
proactive financial plan and
36:18
process for your business so you
36:18
are ready to weather the
36:21
financial storm over the next
36:21
few months, let's chat and see
36:26
what's possible for you. Book in
36:26
a time to speak with me at
36:29
christinasjahli.com/lets-chat.