CAT CHASES DOG (DANGERS ASSOCIATED WITH PUBLICLY ACCUSING A COMPETITOR OF INFRINGEMENT)

A client called me the other day to discuss some steps he wished to take against a competitor who was infringing his patent.    The client wanted to write letters to some major companies that were purchasing product from the competitor, to make them aware of the infringement and advise them that he would be forced to sue them if they continued to purchase the competitor’s product.  The second step he wished to take was to place an advertisement in a magazine widely read in the industry, to inform companies in the industry of the alleged infringing activity by the competitor.  I advised my client that there were some practical reasons why taking these steps might end in disaster.   Firstly, when you threaten companies with legal action, they are not inclined to do business with you.  In other words, it is bad for business to sue customers.  Secondly, when you make statements tending to discredit the business of a competitor you are “potentially” breaching section 7 (a) of the Trademarks Act which reads:
“No person shall make a false or misleading statement tending to discredit the business, wares or services of a competitor.”
My client protested that everything he was going to place in the letters and the advertisement was absolutely true.    In the recent Federal Court case of Excalibre Oil Tools V. Advantage Products, a businessman with the same attitude as my client found out the hard way the risks of making statements about a competitor that turned out to be false.   Advantage sent letters to customers of Excalibre alleging infringement of three patents. However, when the patent infringement action subsequently proceeded to Court, Advantage Products lost; the Court found key claims to be invalid and the remaining valid claims not to be infringed by Excalibre.  The case is presently proceeding to the “damages” phase to determine the amount Advantage Products is going to have to pay as compensation to Excalibre for making false and misleading statements that discredited the business of Excalibre.   Why give your competitor grounds to counter-claim?  If you believe your competitor is infringing, communicate directly with the competitor and, if the matter remains unresolved, sue.

Patent agents are not stifling Canadian inventors

We are indebted to Robert Barrigar for permitting us to post this article that was published in the Globe and Mail on March 8, 2017.  Mr. Barrigar is past-president of the Intellectual Property Institute of Canada (IPIC) and was registered as a Canadian and U.S. patent agent and served four years on the Patent Agents Examining Board.

Innovation is a hot topic these days, but often not fully understood. The role of patent agents is one of the most misunderstood subtopics, and a recent argument in these pages (of the Globe and Mail) that patent agents are impeding innovation in Canada only served to cloud the waters. While the author recommended government action to redefine the regulation of Canadian patent agents, he failed to recognize that the Intellectual Property Institute of Canada (IPIC) had previously, on its own initiative, recommended such to the federal government. Canadian patent agents obtain protection for the inventions of Canadian clients; they do not present obstacles, except charging for their services.

It is important to understand the difficulties faced by Canadian innovators. Our market is small compared to that of the United States. For this reason, it is often more difficult for a Canadian innovator to receive financing for obtaining and exploiting a patent than is the case in the United States. Canadian innovators typically prefer to obtain U.S. patents as a first priority, and Canadian patents, at best, a second priority. Accordingly, a Canadian patent agent has to understand the requirements of U.S. patent law and practice, as a Canadian agent will often be charged by a Canadian client with writing and prosecuting a U.S. patent application. The principal challenges to Canadian innovators – financing, marketing, competition – do not involve Canadian patent agents.

A typical Canadian patent agent has a university degree in science or engineering, and an aptitude for effective communication about technical matters relating to clients’ inventions. Historically, the Canadian patent profession has been governed primarily by the Patent Act and Patent Rules, and secondarily by IPIC. At the present time, this set of relationships is under review both by IPIC and the federal government.

The patent profession is sufficiently small that no specific patent-agent-oriented university accreditation is available for individuals who plan to become professional patent agents – they must rely upon their work experience to qualify for writing the patent agents examinations, which they must pass in order to become registered. They need not have been apprenticed to a registered patent agent, but having had such as a mentor and tutor is clearly advantageous.

The members of the Examining Board who set and mark the examinations that must be passed for registration as a Canadian patent agent are appointed by the Commissioner of Patents. The chairperson of the Board and at least three other members must be professional employees of the Patent Office.

When I served on the Examining Board, the pass rate was appreciably below 50 per cent, partly due to the writing of the examinations by lawyers of limited experience; inadequate technical analysis; lack of familiarity with applicable statutory and case law and regulations; and inadequacy of written expression. It is clearly not in the public interest to accept as members of the patent profession those who cannot pass the patent agents examinations. Canada does not need consultants who fail to comprehend the complexities of patent practice nor those who draft inadequate documents. Perhaps the most underrated desirable qualification for a patent agent is adequacy of expression. Unfortunately, not even a PhD nor a law degree guarantees that this quality is among those obtained through an individual’s education. This reflects a deficiency in Canadian education at lower levels.

It is important to note that inventors may represent themselves before the Patent Office; they do not need to retain a patent agent. But they would be well advised to do so, as serious and sometimes irreversible errors can easily be made by untutored inventors. Chances are that any consultant who attempts to draft a patent application without having been registered as a patent agent will be at risk of drafting a legally invalid or economically useless or inferior document. And any such consultant who attempts to respond to a Patent Office Examiner’s objection will face the same set of problems.

It is important to note that patent agents are not, per se, advocates for clients’ inventions. Clients may wish to obtain and enforce their own patents, but they may wish to invalidate others’ patents or obtain opinions so that they do not infringe such. Subject to avoidance of conflicts of interest, patent agents must be prepared to assist clients to obtain any of these objectives.

Rapid Proto-typing through 3D Printing

singleright

Sandy Colvine of Revolution 3D printers recently gave me a tour of their premises on Henry Avenue in Sidney, along with a demonstration of their 3D printing capability. As a follow up, Sandy has provided me with some background on the current state of 3D printing which may be of interest to you.

Rapid prototyping technology, like 3D printing, allows creators see their dreams come to life. Advancements in additive manufacturing technology means 3D printers are, reliable enough to be used for manufacturing, and versatile enough to print in a range of materials. Some of these materials include biodegradable plastics, flexible rubbers and high-strength alloys. Now a prototype or part can be made in a matter of days rather than months; designs can literally be changed overnight.

Low volume manufacturing with 3D printers means there is no need to stock thousands of parts made abroad. A 3D printer service, as offered by Revolution 3D Printers can make products to order, when they are ordered. They can also produce a vast library of parts.  At Revolution 3D Printers, we offer a one stop shop prototyping service for people that want to bring an idea to the market. We help creators with conceptual design, turning their idea into a digital model and getting a prototype into their hands. We also help entrepreneurs take the next step into production by preparing their design for the manufacturing method that suits their needs. We help inventors turn their ideas from a sketch to a product sold. To learn more, visit our website Revolution3DPrinters.com or reach us with your questions at sales@Revolution3DPrinters.com

Nagoya Protocol

The other day I was asked a question about the Nagoya Protocol.  In order to answer the question, I had to review the text of the Protocol.  Although the Protocol has been around since 2011, it has recently received attention due to the announcement that the Trudeau Liberal government intends to move forward to implement the Protocol.  The Protocol has as its focus the use of biological systems and living organisms to make products and processes for use.  The Protocol seeks to promote a “fair and equitable” sharing of the benefits arising from utilization of genetic resources.  It also seeks to provide funding for the conservation of biological diversity.  An example of the need for conservation of biological diversity is the rapid rate of destruction of the rain forests and conversion to farmland.   It is hoped that funding can be secured that will provide financial incentives to preserve the rainforests.  The knowledge of genetic resources is often held by indigenous and local communities as “traditional knowledge”, and the Protocol contemplates domestic legislation to establish rights of indigenous and local communities over such genetic resources.  The Canadian government will be seeking prior and informed approval and involvement of our indigenous peoples to the use of their traditional knowledge upon mutually agreed terms that will see the indigenous peoples compensated.  The Nagoya Protocol goes hand in hand with the United Nations Declaration on the Rights of Indigenous Peoples (DRIP).  Article 24 of DRIP provides “Indigenous peoples have the right to their traditional medicines and to maintain their health practices, including the conservation of their vital medicinal plants, animals and minerals. Indigenous individuals also have the right to access, without any discrimination, to all social and health services”. Article 31 of DRIP provides “Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestations of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions”.  The passing of a law to implement the Nagoya Protocol in Canada should be relatively straightforward.  Other Countries have already adopted the Protocol and a review of their law should be of assistance in preparing equivalent Canadian legislation.  What may be interesting is the negotiations with our indigenous peoples that will follow the passing of the Canadian legislation into law.  Once a spotlight is placed on the rights of indigenous peoples, there may also have to be put in place protection of the “traditional cultural expressions” of the indigenous peoples as contemplated by Article 31 of DRIP.  I suspect we will discover there are many “traditional cultural expressions” that we have come to take for granted, such as the Cowichan blanket.

Myths that drive IP Lawyers Crazy

Clients often have misconceptions about patents and trademarks. For example, a client contacted me the other day and asked that I make every effort to expedite his patent application. He wanted it granted as soon as possible, and pressed me for a best case scenario about how quickly I could obtain his patent. The client was frantic because a competitor was threatening to sue him for infringement of a patent the competitor had obtained. The client thought that obtaining a patent would make him safe from the threatened legal action. Unfortunately, it is a myth that your patent will save you from being sued by a competitor. You can obtain a patent and still be sued for infringing a patent owned by a competitor. For example, it is possible to obtain a patent for an improvement to an existing product or method, if the improvement is new and unobvious. However, if the improvement relates to something that is patented, and if in order to use the improvement it is necessary to use the subject matter of the original patent, then use of the improvement would infringe the original patent unless the owner of the original patent gave permission for such use. Thus, it is possible to obtain a patent for an invention but to be unable to work the patent without the permission of the owner of a patent for some underlying technology. When there is an allegation of patent infringement, you must either negotiate your way out of the problem (perhaps by cross-licensing) or “design around” the problem. Fortunately for my client, the client’s product is in the early stage of development and the allegation of infringement came up at the first tradeshow where the product was displayed. The client is now considering what changes can be made to the product to avoid the competitor’s patent. If the “design around” attempt is not successful or will take too long, the client has patents on some other technologies that can be used as bargaining chips in a negotiation. That same day, one of our Trademark Agents, Laura Duckett, came into my office to discuss two Trademarks a client had asked us to apply for two years previously. The Trademarks had been allowed by the Trademark Office. The problem was that, in the intervening period, the client had changed the Trademarks. With respect to one of the Trademarks, the client had asked us to apply for a Trademark consisting of two words. However, he had dropped one of the words and was now using a single word. To make matters worse, the single word was a “generic” term for the product that we will be unable to register. With respect to another of the Trademarks, the client had also asked us to apply for a Trademark consisting of two words. However, in the intervening period, he had made a substitution replacing one of the words with another word he liked better. Unfortunately (or fortunately depending upon your point of view), the Trademark Office grants you protection for the Trademark you apply for. It is a myth that the Trademark office will accommodate changes should your Trademark “evolve”. If you make material changes to your Trademark, you have to start the Trademark registration process all over again. When you get involved with Intellectual Property issues, instead of relying upon myths communicated to you by well meaning friends, seek the assistance of a Registered Patent Agent or Registered Trademark Agent in your area. A list of licensed agents is maintained on the Canadian Intellectual Property Office website at cipo.gc.ca.

2016 Annual Meeting of the Intellectual Property Institute of Canada (IPIC)

convention-brochureOne can gain an understanding of issues that the profession is wrestling with by reviewing the titles of the presentations from the 2016 IPIC annual meeting.  Continuing Professional Development: “The Skill Set of the IP Practitioner of the Future – Where will IP be in 20 years?”  Trademarks: “Trademarks in Metatags and Keywords – A summary of the Current State of the Law in Canada as Contrasted with the U.S. and Europe”, “Brand Boot Camp”, “Best Practices before the Trademark Office”.  Patent Issues: “Patent Issues that Keep In-House Counsel Up at Night”, “Patentability:  Dealing with Challenges in IT and Life Sciences”, “Best Practices before the Patent Office”.  Online Issues: “Managing Online Content: Tips, Traps, and Tariffs for IP Practitioners”.  Rights Issues: “Publicity Rights: Guidelines for Giving Clients Practical Risk Assessments”.  Litigation Issues: “Remedies – Quick Results in Trademark Cases: Myth or Reality”, “Top IP Cases of the Year”, “Appellate Advocacy in Specialized Area of the Law”.
Many of the above issues I deal with on a regular basis and have written articles about over the past year.  However, the presentation of “Futurist” Jeremy de Beer was of general application and may be useful to the reader.  Mr. de Beer described an approach to predicting the future using a “grid”.  He creates this grid by placing a first line that represents a trend that one can see today, such as automation (self driving cars, smart homes with remotely controlled appliances).  One end of the line represents the present and the other end of the line represents the future, if the trend continues. He then places a second line crossing the first line at 90 degrees to create his “grid” having four quadrants.  The second line represents a second trend that one can see today, such as the increasing capability of smart phones. Again, one end of the line represents the present and the other end of the line represents the future, if the trend continues.  A first quadrant will predict what happens if neither trend continues, a second quadrant will predict what happens if the first trend continues and the second does not progress, a third quadrant will predict what happens if the second trend continues and the second trend does not progress, a fourth quadrant will predict what happens if both trends progress.  Mr. de Beer indicates when you extrapolate what may happen some of your “predictions” (especially in the fourth quadrant) should appear to be ridiculous.  If this does not occur, you are not pushing the trend far enough. Self driving cars and everyone carrying miniature computers that connect to the internet would have sounded ridiculous 20 years ago. It is not viewed as being ridiculous today.

 

Comment:  I received some comment from Keith Sketchley that I felt should be shared.  He indicated that one should beware of overly simplistic methodologies.  He identified two fundamental flaw, in the futurists approach that he described as follows:

1. Trends do not continue indefinitely, in part because people change behaviours. In technical things that’s called “feedback”.  For example, increasing prices of a product will be met by reduced consumption in response to prices, demand drops, suppliers lower their prices.
2. It is difficult to predict new products and services, and some predictions fall far short. For example, a professor gave a Mr. Smith a C, sneering at his idea that people would pay a premium for assured delivery timing of documents. Mr. Smith went on to start an industry, he called his company “Federal Express

Rules for settling legal disputes

Some time ago, I travelled to Calgary to try to settle a legal dispute through mediation.  In mediation, a mediator attempts to guide the parties to a negotiated settlement. However, in this case the arrangement was that if the parties could not arrive at a settlement, the mediator would change roles and become an arbitrator, that is, authorized to impose a settlement upon the parties. My client and I travelled to Calgary for the weekend, in the expectation that we would fly back Sunday night having resolved the dispute.  My client’s view was the same as mine, that even a poor settlement would be better than a great lawsuit.  Time was also important, as my client had to resolve the dispute with the Calgary Company, before he would be free to enter into a new agreement with another company that was waiting in the wings for the dispute to be resolved. The mediation did not go well.  Every time we made progress, the opposing lawyer would inflame the discussions with allegations of “facts” that my client strongly disputed.   The point was reached where my client told me that he had had enough and he wished to move on to the arbitration phase. The matter then took an unexpected turn.  Instead of hearing submissions and rendering a prompt decision, the arbitrator  required a “Statement of Claim” to be prepared and served by a first date, a “Statement of Defence” to be prepared and served by a second date, an exchange of relevant documents to take place by a third date, examination of the parties under oath by a fourth date, and a “trial” at the Alberta Law Society Offices in Calgary on a fifth date, and indicated that a written decision would be rendered by him by a sixth date.  Under the schedule set forth by the arbitrator, it took another 11 months for the dispute to be resolved.  In another matter, I attended a settlement meeting in Edmonton with the General Manager of a biotech company.  The General Manager had to report to a wealthy individual who was the major shareholder and financial backer of the biotech company.  On the other side of the negotiating table was a person from the University’s commercialization office and a person heading up a biotech research team.   The person from the University’s commercialization office had to report to a University oversight committee.   The people in the room rapidly had a meeting of the minds and reached agreement on all issues, subject to approval of the persons to whom we reported.  It was in the reporting back that the agreement fell apart.  The major shareholder and financial backer, and the University oversight committee repeatedly came back with further conditions which made the job of settling the matter more difficult.  The first settlement meeting gave rise to a second and then a third settlement meeting, as each side tried to cope with shifting and evolving instructions.  I recently read an article regarding Federal Court Prothonotary (type of judicial officer) Mireille Tabib’s experiences as a mediator, which inspired this commentary.  The article, along with my own experiences, provides the following “rules” to follow when entering into negotiations of a legal dispute.  The first rule is to start at an early stage, where the focus is still on business concerns and has not yet shifted to “winning” the legal case at all costs.  The second rule is to focus on commercial realities, that is, what will “work” as a settlement and not the details of the claim that are often in dispute.  The third rule is that everyone doing the actual negotiating must have full authority to settle.

Limitations of Non-Disclosure Agreements

Non-Disclosure PhotoI recently read an article entitled “The scope and limitations of Non-Disclosure Agreements”.  The article explained that a non-disclosure agreement is an agreement in which a party receiving information (Receiving Party) agrees to take reasonable precautions to protect from disclosure information received from a party disclosing information (Disclosing Party).   The article then went on to list a series of matters that must be addressed in a well drafted non-disclosure agreement, including: identifying the information that is to be protected, identifying that the information is being disclosed in order to permit the Receiving Party to complete a specified task for the Disclosing Party, setting forth rules regarding disclosure to employees and safe storage of the information while the task is being undertaken and  requiring the destruction or return of the information when the Receiving Party has completed the specified task.  The article also touched upon remedies available to the Disclosing Party in the event of a breach of the agreement.  Although the article was well written, in my opinion, the author neglected to touch upon a significant limitation of non-disclosure agreements.   Most non-disclosure agreements contain the following provision: “The Receiving Party shall have no obligation with respect to such information where the information has become publicly known through no wrongful act of the Receiving Party”.   Entrepreneurs carefully go around and have non-disclosure agreements signed by parties who are assisting them by manufacturing and supplying components.   Non-disclosure agreements are also signed by parties who are assisting in the preparation of business plans, creating brand names and logos, setting up websites, and setting up marketing plans.  Finally, non-disclosure agreements are signed by parties being approached for investment capital and by parties being approached to assist in marketing and wholesale distribution.   Then on the day of the launch of the product or service, all of the Receiving Parties who signed non-disclosure agreements are released from their obligations, as the Disclosing Party has publicly released the information and thus that information has become “publicly known through no wrongful act of the Receiving Party”.     Non-disclosure agreements are fine for having preliminary discussions, but  once the Receiving Party is working with you, a further agreement needs to be put in place that prevents the Receiving Party from competing with you while they are working with you and for a period of time (for example 2 years) after they cease working with you.  As a practical matter, one or more of the parties you are relying upon as a member of your team may have better connections and more resources than you do.  Once they are released from their obligations under the non-disclosure agreement by your public disclosure, they may come to the realization that they are in an excellent position to deliver the product or service and they no longer need you.  Of course, they will delay acting until they have the opportunity to gauge the market response to your new product or service.  Get the additional agreements signed.  After you have taken all the risks and proven there is a market for the product or service, there will be imitators.  Make sure the imitators are not parties who you thought were members of your team.

PATENT & DESIGNS FOR CORPORATE LAWYERS

Attached is a SLIDESHARE link that relates to a presentation given to the COWICHAN VALLEY BAR ASSOCIATION on July 26, 2016.   The presentation was intended to give this gathering of experienced corporate lawyers background on the law relating to patents and designs, along with some practical insight based upon my years of experience.  It was an enjoyable evening and there was a great dialog that arose out of questions that were asked.http://www.slideshare.net/ThompsonCooperLLP/patents-designs-for-corporate-lawyers

Questions and Answers regarding Licensing Technology

LicensingQuestion:  I filed for patent protection. Should I still have potential Licensees sign a secrecy agreement?
Answer:  Secrecy Agreements can get in the way of licensing discussions. Many companies you approach will not sign secrecy agreements.  In fact, large companies often require you to sign an agreement confirming that they are not bound by secrecy.   If discussions are going well, do not hesitate to reveal more information. Bear in mind that a patent application is not “made public” until 18 months after its filing date. The company you are negotiating with can only see such information as you choose to share with them.  If you feel that they are just pumping you for information, do not share more information until they show their good faith by placing a serious proposal before you. These types of proposals are called Letters of Intent, they contain a financial proposal that is subject to receiving and reviewing further information.

Question:  What should I ask for?

Answer:   Generally it is best to capture the company’s interest and then invite them to make the first proposal.   There are a number of reasons for this.  A first reason is that you may undervalue the technology, whereas if you let them make the first proposal you generally will get more.  A second reason is that you may overvalue the technology.  If the company feels you have unrealistic expectations, the company may break off negotiations. A third reason is that every industry has “industry norms”, for example 5% is a typical royalty in some industries.  A fourth reason is that many companies have a “history” of past dealings that they are influenced by (i.e., “this is how we generally structure our licensing deals”).  If you can get a company to make any form of proposal at all, there is potentially a deal to be made.  The greatest problem in licensing is facing the enormous inertia in every industry.  Unless a prospective licensee is actively looking for a better way of doing things, it can be difficult to get their attention if what the industry has been doing for years is still “working” just fine.  An industry executive can lose his or her position spending money on a solution when there was no generally understood problem.

Question:  What should I expect to see in the proposals received from companies?

Answer:  It is unlikely that you will be offered a single large lump sum payment.    Instead you are likely to receive an offer that includes an initial payment of $10,000 to $50,000 and a royalty percentage of sales.  The reason for this is that an executive who pays a huge lump sum on a technology that does not work out is placing his or her career in jeopardy.   If the technology proves itself over time, a buyout offer may come down the road.

Question:  How do I know if the proposal is reasonable?

Answer:   There are “rules of thumb” that are applied to gauge whether a proposal makes sense.  One such rule is the “rule of 25”.   The rule of 25 is sometimes criticized as not taking into account all factors.  This is true, but it works for many situations.   Under the Rule of 25, the labour and materials required to manufacture a product are deducted from a wholesale price for the product to arrive at a gross profit figure.  This gross profit figure intentionally does not include overhead, advertising or administrative costs.   According to the Rule of 25, the company is taking all of the risks and should be entitled to 75% of the gross profit.  You receive 25% of the gross profit for bringing this opportunity to them and providing patent protection to protect their market.  However, the final royalty percentage is never set out in a license agreement as 25% of percent of gross profit. Instead the royalty is converted to a percentage of the wholesale invoice price.  The reason for this is that you need a number that can easily by audited by an inspection of customer invoices.

We stated above that the Rule of 25 does not take into account all factors.  For example, the Rule of 25 does not take into account additional costs that may be incurred in preparing to manufacture a new product.  This can easily be accommodated through a “step royalty”.   A step royalty is a royalty that steps up or down, depending upon the circumstances.  To accommodate the costs incurred in preparing to manufacture, you may agree to take a lower royalty until those costs are recovered and then your royalty will “step up” to a higher level.  Step royalties are used in a variety of situations.  For example, to get volumes up, royalties sometimes “step down” with volume.  In such a situation there may be a royalty of 7 % on the first 50,000 units sold each year, a royalty of 5% on the next 50,000 sold each year and a royalty of 4% on all units over 100,000 sold each year.

Question: Is there any rule of thumb for assessing a lump sum offer?

Answer:  Accounting firms can make projections to determine the amount of royalties expected to be generated over the life of a patent. The accounting firms can then give you a “current value assessment” so that you have a calculation of what lump sum is appropriate as a replacement for the royalty.  This works well when you have been receiving royalties for a number of years.   When the product has not even been on the market and has no sales history, the number is essentially a creative fiction, even working from the best information available.  Even when royalties have been paid for a number of years, the accounting firm must make some assumptions regarding changes to product price due to cost of living and growth of market share that may turn out to be false.  When you have a large lump sum offer presented to you, consider what the alternatives are and how receiving the funds will affect your life.

One client of mine received a 10 million dollar offer and turned it down.  The reason was that he was perfectly happy with the quarterly royalties he was receiving and it did not take an accountant to see that he would be making well over 10 million dollars over the next 5 years by simply keeping his existing royalty stream.  Another client of mine received a 2 million dollar offer and accepted it.  There were no sales.  He could not afford to put the product on the market himself.  If the 2 million dollar offer was withdrawn he had no viable alternative.  He had a wife, two young children, a mortgage and debts incurred in developing the technology.  Receiving the 2 million dollars now would have a major positive impact on his life.

Question:  What should I look out for in any proposal?

Answer:  It is a mistake to focus just on the financial details of the offer.  One should look carefully at what obligations are being imposed back upon you.   Those obligations could cost you more than you will receive.  Who has to pay the expenses associated with completing and maintaining patents in Canada and the United States? If the company wants foreign patent protection, who has to pay the expenses associated with completing and maintaining the foreign patents?  Who has to pay the expenses associated with enforcing the patent against infringers?
If you have granted an “exclusive” license (which often is the case), you need minimum performance requirements to ensure that your technology is not shelved.

On a human level, you and your technology need a “champion” within the company.  Someone you feel is committed to the technology and will drive the implementation of the technology within the company.   Preferably, someone you can relate to.