Canadian Lawyer InHouse

23 CANADIANLAWYERMAG.COM/INHOUSE SEPTEMBER 2015 23 CANADIANLAWYERMAG.COM/INHOUSE SEPTEMBER 2015 Without all of them, this wouldn't have happened at all," says Death. The team came up with what Death calls a bespoke solution pulled together based on the internal expertise of his team and external consultants. The model is now the standard for facilitating patentable innovation at TD in Canada, and it has been proposed for use in the U.S. as well. "Right now, the way it is being positioned is for entirely defensive purposes, in reaction to what we are seeing in the U.S. with the banks there. The senior executives are made aware of what they have in the portfolio so they can continue to monitor the activities of their U.S. counterparts." SANDRA STRANGMORE Protecting innovation at TD "I wouldn't say it is the standard for what legal departments do. The role we are serving here in helping TD develop this portfolio is a bit unusual in Canada." JOSH DEATH Josh Death CATEGORY: Risk Management DEPARTMENT SIZE: Large COMPANY: Josh Death, associate vice president, legal, TD Bank O ver the years, the Toronto Domin- ion Bank's U.S. competitors, both fi nancial institutions and other sector play- ers in the payments and mobile apps space, have aggressively developed their fi nancial services patent portfolios. TD did not have a patent portfolio befi t- ting its North American footprint when Josh Death, associate vice president, legal, TD Bank, identifi ed the gap and championed a strategic focus on patentable innovation to the senior executive leadership at the bank. The lack of a patent portfolio was considered an area of risk for the business. "When we're looking at what our peers are doing on the street, we recognized it's important for us to have equiv- alent competitive assets in the different silos we're competing in in the marketplace," says Death. He was then tasked with developing a patentable innovation methodology and tool kit. He developed that methodology, validated it with international innovation experts, and established a centre of excellence to implement the methodology. His methodology included problem identifi cation, application of innovation tools, and a process to capture and then fi le patent applications. "To the best of our knowledge, TD is the only FI in Canada to have such a centre of excellence, and is likely unique in North America for that function to reside within legal," says Jane Langford, vice president legal with TD Bank, who nominated Death for the award. Langford says TD legal has developed a centre of excellence (the offi ce of patentable innovation) and it is now the "go-to" resource across the enterprise for patentable innovation. Death says the lack of a patent portfolio was becoming a material risk and developing one has become standard procedure. "What we're seeing with our competitive U.S. banks is they all have robust material patent portfolios. That was the primary reason this initiative was launched in the fi rst place," he says. "I wouldn't say it is the standard for what legal departments do. The role we are serving here in helping TD develop this portfolio is a bit unusual in Canada." Death was assisted in the project development and implementation by a multi-disciplinary team including Orin Del Vecchio, Jon Barnett, Paul Chan, and Jennifer Woods. "I had a sizeable team assembled to help deliver on this initiative, including patent lawyers, business people, and technologists.

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