What your company needs to know about IP

Miller Thomson’s David Schnurr shares why startups need to start early on their patent strategy: to protect their product, their company, and to stay competitive in the long run.

The beginning of many startup journeys starts with an idea. It’s an idea for a product or service that will help customers do something faster, easier, or better. Building the product might be the first thing many founders think of, but there’s something even more crucial for founders—putting together a patent strategy.

David Schnurr is a partner at David Johnston Research + Technology Park tenant Miller Thomson. He is a Registered Patent and Trademark Agent in Canada and the United States and provides IP and IT advice to clients. Schnurr said he has always been interested in science and technology, but his true passion is in law.

During his undergraduate studies at the University of Waterloo, Schnurr saw the rise of technology companies like OpenText and BlackBerry and decided he wanted to practice law here. Schnurr joined Miller Thomson and has worked with the firm since earning his law degree from Western University.

“As BlackBerry started to take over the world, it became even more clear to me that I wanted to work and practice in Waterloo Region.”  Over the years, Schnurr has provided legal counsel to many of the Region’s leading technology companies, including BlackBerry.

Schnurr said that, like many in the community, he shared concerns about what would happen to the local economy as BlackBerry’s market dominance declined in the early 2010s. While much of the press at the time painted a bleak picture, Schnurr said he saw the opportunities for new startups to rise from those employees who were laid off from the smartphone maker.

“We saw these well trained, skilled employees starting up their own companies. Some were joining other established technology companies and helping them grow. It didn’t take long to realize that we have this incredibly strong ecosystem in Waterloo Region”

David Schnurr

“It was barely a blip on the radar. We saw these well trained, skilled employees starting up their own companies. Some were joining other established technology companies and helping them grow. It didn’t take long to realize that we have this incredibly strong ecosystem in Waterloo Region and ultimately, we were going to be okay,” Schnurr said.

Since then, Waterloo Region has seen the rise of billion-dollar valued tech companies, including ApplyBoard, Arctic Wolf, and Faire. Schnurr said that Waterloo Region tech continues to attract the attention of people around the world.

“When I attend international conferences from time to time, inevitably there are people there who know Waterloo, who know the Waterloo story, and they’re excited to talk to me about the great things happening here,” Schnurr said.

Back in R+T Park, Schnurr’s practice focuses on core IP, including trademarks and patents. His clients typically include companies looking to file a trademark or patent application or those with a trademark or patent dispute. He also has a significant practice in the area of information technology law, which includes technology contracting, software, outsourcing, procurement and privacy law. He represents IT service providers, software vendors, and customers retaining services from technology companies in the information technology space.

Schnurr has worked with several local, national, and international startups and said it’s critical to identify key legal issues as early as possible. He added that many clients unknowingly had made decisions that could or already have significantly compromised their business. These issues could be related to the organization of the company, shareholder agreements, or taking on investment for growth, and crucially, decisions related to protection and disclosure of intellectual property.

“There is a great deal to understand, such as the rules for ensuring transfer of ownership when employees or contractors are engaged to create IP. There’s also ensuring that the company is not making an early disclosure of key IP that could end up negating any ability to patent or otherwise protect the IP.”

David Schnurr

“There is a great deal to understand, such as the rules for ensuring transfer of ownership when employees or contractors are engaged to create IP. There’s also ensuring that the company is not making an early disclosure of key IP that could end up negating any ability to patent or otherwise protect the IP. Those certainly are key issues that we really want to ensure the clients get on top of at an early stage,” Schnurr said.

Talking to an expert at an early stage can go a long way to setting a company or startup on the right path. Schnurr said that another mistake often made is only looking at IP protection as a legal issue.

“IP protection is also a way to build the value of a company as opposed to a legal expense. IP can often be a key way for a young company to materially grow its value. If a company is managing its IP portfolio correctly, they will be much better off for it, whether they decide to file patent applications or not” Schnurr said.

Being in the R+T Park since 2006 has continued to give Schnurr and Miller Thomson a front-row seat to the growth of innovative tech companies in Waterloo Region. Part of Schnurr’s practice involves pro bono work for early-stage companies as they navigate early challenges like IP strategy.

“At the end of the day, you don’t want to see any company, especially local startups, falter. We’re all together in this ecosystem,” Schnurr said.

To learn more about Miller Thomson’s service, visit millerthomson.com.