some thoughts...

if or when we get funding, we should reflect on what are motivations
are for working on the pandabot.

if we are to get equity, we should consider if we are motivated by
money, control, or a combination of money and control.

it will make negotiations easier with investors, and among ourselves.

it will also control the corporate structure and the classes of shares
we will receive, and how the shares will be issued and maintained.
different classes of shares can have different attributes assigned to
them, e.g. preferred payment, or control, or a combination of money
and control.

we will need to put a name to each shareholder and the number of
shares they own of the company.

we will also need a board of directors.

there is much to do and decide, if we get funding, prepare for the
ride. :P go big or go home is also part of the message we heard today.

what an interesting day!

felix

The Loss of a Partner

The brief obituary of Achmed Sadik.

Our friend, mentor, and law partner.

We miss you.

Felix Tang

Canadian Undergraduate Technology Conference

Innovate LLP will be part of the technology expo at the Canadian Undergraduate Technology Conference (CUTC) being held at the University of Toronto on May 7 and 8.

Eric Hong, who is part of the logistics team, came to visit our office at the MaRS Centre and learned more about the job of being both an engineer and an intellectual property lawyer in private practice. The job shadow program was organized by the Engineering Science program at the University of Toronto. Through that initial contact, Eric invited us to participate and support CUTC.

We look forward to being at CUTC in a few short weeks!

Take care,

Felix Tang

Project management

Having recently considered the basic issues of knowledge management. Let us consider project management and why this would be of interest to law firms, specifically large law firms.

From an engineering perspective, project management is important because experience has shown that it is not trivial to coordinate a team to accomplish a task. In fact, the larger the team the more complicated the project management issues become. It isn't as simple as just simply dividing the number of tasks amongst a bunch of individuals, simple things like managing communications between members increases rapidly in complexity.

That is, if you have a small task that can be accomplished by 2 people, a large task cannot simply be solved by throwing more people at the task. The solution generally does not scale linearly. Not if you want to accomplish the task efficiently and within a budget.

I believe the large law firms are considering project management because of the economy and the push to deliver ever more value to their clients. Traditionally, a law firm would not care about project management because any overruns in time and expenditures are simply passed on to the client. That was a great time and a great business model for the law firms involved.

However, as the push to fixed fee billing, caps on billing per task, and other alternative fee arrangements arise in order to encourage partnership with the client. The onus or burden of the cost overruns in time and expenditure are increasingly being shouldered by the law firm itself. From a start-up point of view, this is a normal way of life and is the norm in many other industries. Being a partner with a client means that there is a sharing of both the rewards and the risks!

So we have established the what of project management, and the why of project management, now what? Well, I guess we'll see how it evolves and the industry specific solutions work out. I argue that it is the law firms that, out of necessity, must understand this push for greater efficiency, the art of the proper quote for routine work and projects, including the collection and analysis of of their own performance data that will determine the new leaders in legal industry.

As a small firm, we are routinely dealing with cost-sensitive clients who demand the most value for their valuable and limited legal spend. Quoting fixed fees where appropriate or providing reliable estimates is expected or both, while delivering quality service on target is our definition of a successful partnership with our clients.

Luckily for us, engineers and scientists are trained to work collaboratively in teams to accomplish much larger goals than any one member of the individual team members could. The processes and methodoligies will likely come from the technical consulting and management consulting side of the world, as they also deliver professional services and are one of the closest industries in terms of business model.

Although, the convergence between legal and technical consulting is here (arguable management consulting), and is demonstrated by the development of e-discovery teams at large consulting firms such as KPMG and peers. The legal industry has traditionally been a very restricted field and not subject to the competitive pressures that technology industries have experienced. But, that day is now, or maybe it was years ago, with other large providers of legal process outsourcing (LPO) such as CPA global delivering compelling solutions and value.

I myself am currently considering how best to leverage our technical and legal expertise to be part of the vanguard in pushing the boundaries. However, that's a topic for another day!

As always, I'm happy to receive your comments and feedback.

Take care,

Felix Tang

p.s. The subject of this article is attributed to Jason Leung, Director of Knowledge Management at Ridout and Maybee, who raised this topic in an email conversation and at lunch.

Shopping the Idea

Once patent protection is obtained, I really recommend shopping the idea around for funding. While funding might be helpful, I would shop for validation alone. Many people are enamored with their own ideas and risk their own capital to advance ideas forward. These people would benefit from an unrelated third-party’s analysis of the business model and risks involved. If the entrepreneur is able to convince a disinterested (guarded) party to invest, it is a pretty good sign that the business model shows promise.

Please contact me for any feedbacks, experiences or questions.

Kwong Ho

Provisional Application as a Call Option

As an entrepreneur, my first rule in business is not paying for something unless I can precisely articulate what returns I will be getting back. This rule prevents me from throwing money at problems – and there are many unexpected problems that spring up when a startup gets going.

I have paid as much as $70K and as low as $4K for a patent draft. There is obviously a range of services and rates in the market. How does one know what and how much to pay for? In following my first rule in business, I always start with minimizing my cost in protecting my idea. This is typically a provisional patent application in the US (note the provisional rules in Canada are different). It is something that I can pay for with my credit card (a couple of hundred dollars) and it provides “a call option” on the idea for a year. Since the provisional is not published, you can put in whatever information you have but make sure the idea is sufficiently disclosed. All of the provisional patents that I have submitted have been research papers. In reflection, I suppose there were other ideas (extensions of the research) that I could have described in writing and be able to submit them provisionally but then I would have to carefully carve out prior art (which takes research and requires documenting later). In my low cost approach, I would submit an accepted paper because some committee of scientists would have provided a peer review on the research and that would suffice to ensure that I have something that is novel and useful. I have never put claims alongside the papers submitted because they often need to be reworked in the actual draft but it doesn’t mean you can’t.

Please contact me for any feedbacks, experiences or questions.

Kwong Ho

IP Protection

I have been involved with several tech startups and IP has always been a part of every tech startup's conversation. Articulating the IP puts the strength of the idea in the context of a business model. Having IP assures the new venture is innovative and substantiates value to a potential investor. IP protection, if implemented, provides a form of insurance against erosion of capital invested. The question of how to go about protecting the innovation of a startup is often a set of complex considerations based on strategy and financial strength. Over the next couple of blogs, I will share some thoughts from my personal experience in the hopes of simplifying this decision process.

Please contact me to share any feedback or experiences or if there are any questions.

Kwong Ho

Presentation to DDiMiT and KMDI

On March 10, 2011, I gave a presentation to the new public-private consortium Designing Digital Media for the Internet of Things (DDiMiT) at their round table on the intellectual property of things. DDiMiT is currently led by the Knowledge Media Design Institute (KMDI) and the Faculty of Information at the University of Toronto. DDiMiT includes members from four local universities, eight digital media content companies, and the Ontario trade organization Interactive Ontario.

The focus of my talk was on presenting: A non-traditional and open analysis of Intellectual Property law.

I spoke about different ways of conceptualizing intellectual property law, focusing on the expansion of the commons, the new issues raised by 3D printing, and how to deal with demand letters.

From my own preparation for this presentation, I believe that industrial design protection will take on greater importance, especially as 3D printing takes off and makes it's way into our everyday lives.

I also encouraged the audience to become smarter consumers of legal services by providing them with a basic understanding of the business of law. This includes understanding what should be shown in a law firm's bill, e.g. who worked on the matter, time billed, and the work performed; and, that is possible to have a law firm's bill assessed.

Should you have any comments or questions, please feel free to contact me.

Sincerely,

Felix Tang

Beyond First-Generation Knowledge Management

The CBA PracticeLink article written by Julie Stauffer is on moving "Beyond First-Generation Knowledge Management" and includes comments from leading knowledge management (KM) practitioners who discuss some of the trends and challenges of an evolving field.

I was interviewed by Julie and talked with her about the issues small firms face re knowledge management.

The article is available here: http://www.cba.org/cba/practicelink/leadership_strategy/KM.aspx

As always, small firms must pay attention to the issues that larger firms are facing, and to try and learn from the solutions that they have evaluated and are implementing!

(Link to original blog entry on KM for small firms by me: http://blog.innovatellp.com/2010/04/knowledge-management.html)

Felix Tang

Innovate LLP

Knowledge Management

Knowledge management (KM) is a fundamental business process for every company, especially companies that focus exclusively on the creation and generation of intellectual property.

A professional services company, such as a law firm, is just such an entity.

Managing new work product, multiple versions of work product, metadata associated with work product, and near simultaneous collaboration on work product are actually well known problems.

The clearest solutions, in my opinion, come from the software and technology industries. Version control, build control, multiple targets, sophisticated management of groups of changes that can be applied or rolled back, these are the issues faced daily by programmers and engineers.

The key to having a sustainable vision to KM is developing and deploying KM solutions that "evolve". That is, you must design from day one a KM system that suits your present and near future needs, while always understanding that you will grow past your present solution and require a new one.

Avoid vendor lock in, don't get mired in proprietary systems, focus on data liberation and data portability, don't take shortcuts or bury your head in the sand. Also, don't trust what a vendor advertises or tells you, do the homework and actually try getting your data out! If it's not in a easy and open computer usable format, it's worthless.

The KM system we deploy at Innovate LLP was designed from the ground up to account for these issues. Using our experience with managing build flows for multiple target platforms with multiple target operating systems does help in the design process. The reality is that your solution doesn't have to be complicated and it doesn't have to require specialized software.

Presently, we deploy Google Apps for email and calender; Xero for accounting; and Dropbox for document management. The KM aspect is handled in the way we organize our client matters and internal documents. Dropbox takes care of the automatic synchronization with basic version control of all our documents across all our computers in near realtime, limited only by bandwidth. This eliminates error prone processes of emailing documents back and forth, etc.

Discipline and usage is enforced by the relevance and simpleness of the system, and of course by a KM administrator. The KM administrator is responsible for leading by example and always focusing on "evolving" the solution to ensure the team wants to use the KM system because they are constantly reaping the rewards of the KM system and processes.

Currently, we had the great opportunity to add a new partner. Since all our processes and systems were designed to handle, more than one user, it was very simple to add him to our organizational infrastructure.

You may argue that we have a limited problem domain due to the number of users. However, we are also dealing with a modest budget, as are all KM and IT departments in all organizations. We are already researching new tools and learning to understand what the specialized legal and IP management systems have to offer. With growth comes the potential for pain, evolving the KM infrastructure just ahead of the growth allows your organization to focus on developing, selling and delivering.

If you have any comments or opinions, I would be happy to hear them.

Enjoy,

Felix

Centre for Social Innovation - IP Presentation

Click the following link for the slides to the Intellectual Property for All Organizations presentation.

Take care,

Felix

USPTO article on US Provisional Application for Patent

We have been asked by our clients about the pros and cons of filing a US Provisional Application for Patent. In summary, the USPTO Provisional Application for Patent article provides a detailed list of Cautions and Features.

For example, below are some of the listed Features:

* Provides simplified filing with a lower initial investment with 12 months to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;

* Establishes an official United States patent application filing date for the invention;

* Permits 12 month's authorization to use "Patent Pending" notice in connection with the description of the invention;

* Enables immediate commercial promotion of the invention with greater security against having the invention stolen;

* Preserves application in confidence without publication in accordance with 35 U.S.C. 122(b) , effective November 29, 2000;

Take care,

Felix

Scientific Research and Experimental Development (SR&ED) Tax Incentive Program

Today, I attended a seminar run by the Canada Revenue Agency ("CRA") for people preparing SR&ED claims.

Entrepreneurs need to educate themselves about the SR&ED program. It can provide innovation tax credits that can potentially be cash refundable.

There are many ways to handle the drafting and filing of a SR&ED claim. You can do it yourself, or SR&ED consultants can be hired. The majority of consultants work on a contingency basis and will only be paid from a successful SR&ED claim. They will want to charge anywhere from 20-50% of a claim. Anything outside of 20-25% seems excessive, but circumstances and experiences may vary.

More importantly, the wording of the tests used to determine if the scientific research and experimental development qualifies for the credit reminds me of the tests used in patent law. They are not the same, however, I believe that anytime a SR&ED claim is filed, it is important to consider the potential intellectual property ("IP") issues. Perhaps your company has created something patentable, or has developed a trade secret or know how? Lastly, be careful in your interactions with independant contractors by always having a written agreement that specifically deals with any developed IP. In the final analysis, a SR&ED claim does not only have to pass the scrutiny of the auditors and CRA but is ultimately a document that must be defensible in a Federal Tax Court.

The horror story told, by the SR&ED accounting manager, was one in which there was a falling out between the contractor and contracting company. There was no signed agreement and contractor was able to document the time and money spent, while the contracting company could produce nothing. It was implied that the SR&ED credit was not available to the contracting company, additionally, it must be assumed from the facts that neither was the intellectual property!

Please take a look at the CRA site for the SR&ED Tax Incentive Program for more details. In Ontario, the Ontario Innovation Tax Credit and Ontario Research & Development Tax Credit are also available.

I would be happy to talk to you about the SR&ED process, and to provide advice on how to best move forward in a manner that is both tax and IP law compliant. We have working relationships with SR&ED consultants and accounting professionals.

Take care,

Felix

Google Wave - a new way of collaborating in real-time

I just received my google wave invitation. In a nutshell, google wave is a way of collaborating in real-time. Principally, it changes the location of the information exchange from the edges, i.e. the individual user's computers, to making everything happen in a centralized server therefore turning every user's computer in to a thin client.

There are robots, which behave as programmable agents, among many other useful features. I believe this is all best explained by the google wave team themselves. They have released a short 8 minute video, in contrast to the 80 minute one available before!

Enjoy,

Felix

Bilski Briefing: Government Argues that Section 101 "Processes" are limited to "technological and industrial processes."

According to patentlyo.

Courtesy of: RT @jason_schultz_: Obama Admin files its Bilski SCOTUS brief, commenting on business method and software patentability: http://tinyurl.com/yenutwv

Augmented reality on the iPhone?

Augmented reality games on the iPhone, courtesy of changes in the operating system ("OS") of the iPhone, which includes the addition of a hardware overlay feature, or API access to the feature.

I had an interesting discussion of how the changes in v. 3.1 of the iPhone OS allowed for hardware overlay at the friendly Unpatched Tuesdays meeting at hacklab.to. It was a relaxing time with interesting conversation.

Also, I'm impressed that augmented reality type programs are available on such a "wearable" (in your pocket) system as the iPhone. The details of the games are available at toucharcade.com.

Take care,

Felix

[SaaS/Cloud] storage

So, we've been looking for a Software as a Service or cloud storage solution. It's a great offsite storage solution since you don't own or operate any of the machinery. Also, the new generation of solutions can function as a network drive or provide even simpler interfaces.

Two we've been evaluating are:

1. jungle disk, which uses the amazon s3 service.
2. dropbox

Seen anything interesting?

Felix

Employment Law Seminar from 2006

Free online employment law seminar from 2006, which provides a great general overview. Please use this seminar for informational purposes and understand that the law may have changed over the last few years.

The seminar does not deal with IP, trade secrets and non-compete/non-solicit issues in detail.

Business Law - Hiring and Terminating Employees: Protecting a Business on the Way In and the Way Out

by George Waggott.

Felix Tang, Lawyer & Engineer

Nature article

So, after taking a look at the Nature website. I have found something that is useful and informative.

Five IP tips to spread your business wings

James G. Cullem

"Intellectual property (IP) is a critical asset at most life science start-up companies. Savvy organizational management of IP strategies and assets is essential in optimizing IP value as a sustainable business is built."

Felix Tang, Lawyer & Engineer

Patent Agent Exam proposed requirements changes

CIPO is looking for comments on a proposal to change the patent agent exam requirement for apprenticeship from 12 to 24 months.

If this affects you, please make sure your comments are heard!

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01997.html

Felix Tang, Lawyer & Engineer