intellectual property : the new frontier ashish basu 5 th august 2004

Intellectual Property :The new frontier

Ashish Basu

5th August 2004

Ashish Basu © July 2004

Agenda What is ‘Intellectual Property’ Historic context Tangible vs. Intangible Assets Patents, Copyrights, Trademarks Why is it relevant? The Indian context Why BE College? What can be done, short term, long term? Conclusion


What is Intellectual Property “Intellectual Property or IP is the term that describes the ideas, inventions, technologies,

artwork, music, literature that are intangible when created but become valuable in tangible form as products”.

- World Intellectual Property Organization Forms of IP – Patents, Trademarks, Copyrights, Other evolving forms

Some IP s that changed the course of humanity

Inventor Country Invention, YearJ Gutenberg Germany Printing Press, 1440

Conrad Gesner Switzerland Pencil, 1560

Maharaja Jai Sigh India Astronomical Instruments,1728

O & W Wright USA Airplane, 1903

Vladimir Zwoykin Russia Electronic Television, 1929

Konrad Zuse Germany Programmable Computer, 1941

Alexandar G. Bell USA Telephone, 1876

Samuel Morse USA Morse Code, Telegraph, 1840


Historical Context The concept of Intellectual Property or IP is not new The Venetian Law of 1474 is considered the first systematic IP law Patent / IP Laws - England: 1624; France:1791; USA: 1788; Germany: 1877 Japan: 1888; India:

1st Major International Effort: The Paris Convention, 1883 – for the protection of IP in other countries; covered patents, trademarks & industrial designs.

2nd Major International Effort: The Berne Convention, 1886 – for the protection of Copyright of literary & artistic works in other countries; covered copyrights.

3rd Major International Effort: Formation of the World Intellectual Property Organization or WIPO, 1967 – covers patents, copyrights, trademarks…others

4th Major International Effort: Trade Related Aspects of Intellectual Property Rights or TRIPS of WTO, 1996 – covers new types of IP e.g. IC’s, S/W, H/W

1888


Tangible/ Intangible Assets - Countries

US Companies’ Intangible AssetAs a percentage of Total Asset

Data from Japan:About 50% of Total Asset

Data from EU:About 40% of Total Asset

Data from UK:About 40% of Total Asset

The brick & mortar economy is changing to a economy of ideas/ IP

Source: WIPO


Intangible Assets - Companies

Source: Patent & License Exchange,WIPO

Intangible Assets like IP are on their way to become the ‘ultimate asset’!


Universities – some examples

Source: WIPO

• Bayh-Dole Act 1980• Asso. Of Univ. Technology Mgrs AUTM – 2178 members by 1999.• Japan’s Tech Licensing Law for Univ.in 1998; About 15 TLOs now• Oxford Univ. TLO 1988, called ISIS Innovation


Why is it relevant ?

Intellectual Property is an important National, Institutional & Corporate Asset. In 2000 a Price Waterhouse estimate indicated roughly 78% of S&P 500 Value was in Intellectual Assets, going forward the importance of Intellectual Assets will increase vis-à-vis Physical Assets.

Good academic institutions have an obligation to train their students adequately because many of today’s students will join a very ‘IP Aware’ workforce tomorrow. Many of them will directly work for IP companies.

Intellectual Property enhances National & Institutional valuation and branding.

Intellectual Property can be a source of revenue for the institute.


Overview of IP Laws Patents ( Federal Law in the US)

Protects structure and function

Foreign country (country by country)

Copyrights ( Federal Law in the US) Protects expression only

Tangible medium

Must register within 3 months of first publication

Trademarks ( Federal & State Law in the US) Protects established relationship between seller and buyer

Includes provisions prohibiting unfair competition

Trade Secrets ( State Law in the US) Economic value for not being generally known

Subject to reasonable steps to maintain secrecy


Patents: Underlying Ideas

Patentability : Processes, machines, articles of

manufacture, compositions of matter

Must be useful, novel & non-obvious

Rights : Making, Using, Offering for sale, Selling,

Importing without the owner’s consent

Inventorship : Must be filed in the names of the true

inventors, idea to be reduced to practice.

““The system added the fuel of interest to the fire of genius “– Abraham Linclon,The system added the fuel of interest to the fire of genius “– Abraham Linclon,President of the United States of America 1861 – 1865 & a patent holder..President of the United States of America 1861 – 1865 & a patent holder..


Patent: what does it contain?

Specification: “….description for repeatability by someone equally trained in the prior art……”.”

Claim : what exactly is protected

Inventor/s : person/s who are responsible for the invention and reduction to practice. Even in the cases of company patents, the inventors are named.

Date : date of award of patent, protection applies from the date of application for 20 years

Patent No. : awarded by the PTO


Steps/ Timeline to get a Patent

1. Invention Disclosure Statement: Pre examination of prior art

2. Draft Application: Specification & claims repeatability, novelty

3. Application: Computer Application to PTO

4. Review: PTO Examination

5. Result: Clarifications/Rejection

6. Award of Patent

Source: IP Strategy Group


Copyright

Copyright: “….original works of authorizing fixed in anytangible medium of expression….fromwhich they can be perceived, reproduced orotherwise communicated, directly or with theaid of a device.”

Five rights: Reproduction, Adaptation, Distribution,

Performance & Display subject to fair use exceptions.


Securing a Copyright

Copyright : Created automatically the moment the copyrighted material is.

Validity:

i) Individuals : 50 Years after the author’s death

ii) Joint : 50 Years after the death of the last

surviving author

iii) Unknown : 75 years from the first publication

Symbols : ‘Copyright’ © or ‘Copr.’


The Indian context Country of renowned inventors – Aryabhatta, Barajamihir, Maharaja Jai

Singh, J.C. Bose. S.N. Bose, P.C Roy, C.V Raman, S. Chandrasekhar to name a few.

Fairly up to date and robust legal framework: First Patent Law, 1888

(Same year as Japan ! None of our neighbors in Asia are anywhere near India w.r. to the legal framework & practice ); some examples -

1. Patents, Act, 19/09/1970, No. 39

2. Copyright, Act (Consolidation), 04/06/1957 (30/12/1999), No. 14 (No. 49)

3. Copyright (Amendment) Act, 1999

4. Copyright (International Conventions Organizations ), Order, 17/05/1989

5. Marks (Register India), Order, 13/12/1991, No. 848 (DK_049)

6. Designs (Act 1927 S. 152 India), Order, 20/12/1976, No. 315

7. The Geographical Indications of Goods (Registration and Protection) Act, 1999 (No. 48 of 1999)


REQUIREMENTS OF INDIAN PATENT LAW AND PRACTICE RELATING TO MECHANICAL, ELECTRICAL, AND ELECTRONIC SUBJECT MATTER.

What constitutes an invention has been defined in Section 2 (1) (j) of Indian Patents Act, 1970. According to this definition irrespective of the fact the subject matter is method, machine,

apparatus, or article it would be considered an invention as long as it is new, useful and involves an aspect of manufacture

REQUIREMENTS TO APPLY FOR PATENTS Applications must include : a. Name and complete address of applicant. b. Name, nationality and address of inventor. c. Title of invention. d. Details of patent applications filed abroad. If not granted, number , date, country and status of

the corresponding applications, if applicable. e. Power of attorney signed by the applicant. f. Application form duly signed by applicants and inventors. g. Declaration of priority when necessary. In addition, the following documents must be attached to the application : h. Abstract of the invention, specification, set of claims and drawings if appropriate. i. Certified copy of the priority document. In case priority document is in a language other

than English, an English translation thereof also needs to be filed.

DURATION AND RENEWAL FEESPatents are granted for 14 years from the date of filing (7 years in case of food and drugs)and

renewals are due annually from the beginning of the third year onwards. Note: If all documents have been filed, depending on the backlog in the Patent Office, the acceptance normally takes place within about 2 to 3 years from the date of filing of the application.

An Indian example

Source: IndiaIP


CSIR – Indian knowledge Center CSIR set up Intellectual Property Management Division or IPMD in 1996.

CSIR & IPMD file the largest no. of patents in India. Its international filing is doubling every year.

Source: CSIR

CSIR’s Patestate provides assistance in 1. Formulating an overall strategy for dealing with an organization's

technical and knowledge-based resources 2. Identifying and grouping technologies from the IP marketplace by

putting together pieces of a large portfolio 3. IP Portfolio Management 4. Integrating Patent Strategy with Business Strategy 5. Legal assistance for technology transfer-related issues


Why B.E College ? This is an effort intensive endeavor, physical resource requirements are not much. Many of us believe that B.E. College has the necessary talent. Many US Universities, Universities of Tokyo, Osaka, Ritsumeikan Univ. in Japan, several in EU, UK have full fledged IP Departments now.. Only a few institutes in India have started focusing on this !

In the past the outside perception has been that, B.E College is relatively slow is adapting to the needs of the industry. In addition to fulfill its obligation to its students, the institution can take thought leadership in the area of Intellectual Property. Good work in the area Intellectual Property area could strengthen the case for upgrading the institution’s stature.

Intellectual Property licensing, IP consulting can be source of revenue for BE College.


Short term actions… Create a 2 Member IP Cell attached to the VC’s office. The IP Cell should be inter-disciplinary in nature. The cell should have at least one external member ( Stanford Univ, set up its OTL in 1969 ! Now 25+ people ).

The IP Cell should focus on the following – Written IP Policy guidelines for the institute Create a Technology Licensing Organization or TLO Organize the exiting research, records. Participate in IP related consulting assignments e.g. IP Audit Get connected with IPMD of CSIR & STPI Calcutta Prepare a budget & plan for a full fledged IP Department by 2006 Plan to submit a formal proposal to the Government Plan at lest two in depth IP awareness workshops for the faculty and

research scholars.

The institute should encourage members of the faculty to participate in IP related discussion forums, Govt. committees.


Long term actions… Create a full fledged IP department.and TLO At least one member of the faculty should have a legal exposure in addition to science/ engineering. Create formal ongoing engagements thru’ CSIR, STPI.

Plan to offer an elective course on IP. Make students aware of their rights and obligations in the IP world. Allocate a percentage of the total research funds towards IP creation.

Encourage departments and faculty members to create IP thru’ in house research projects as well as industry sponsored research projects. Eventually IP creation could be one of the review parameter for departments & faculty members.

Seek assistance & guidance from the Global Alumni community towards IP creation e.g. distinguished Alumni could ‘co-guide’ PhD students.


Thank You !

Attention:Attention:

Conclusion

Interest:Interest: Awareness workshops, Seminars Awareness workshops, Seminars

Desire:Desire: IP Cell, TLO, IP policy for the Institute IP Cell, TLO, IP policy for the Institute

Action:Action: Engagement with CSIR, STP, IP Creation Engagement with CSIR, STP, IP Creation


Speaker BioAshish Basu Ashish completed his graduation from B. E. College (Civil Engineering) in 1983 and master’s from IIT Madras (Structural Engineering & Computer Aided Design) in 1985. Ashish started his career as a Structural/ CAD Engineer with a Delhi based consulting company. Over the last 16 years, Ashish has worked in various Sales/ Marketing/ Product Management roles for Information Technology companies in India, United States and Japan. Ashish’s exposure in Intellectual Property (IP) business started when he became a member of the founding team of Wipro’s Semiconductor Intellectual Property Business Unit (eventually spun off as a separate California corporation called EnThink Inc). Ashish contributed in setting up Wipro’s Japanese subsidiary & supervised EnThink’s IP business in Japan. Subsequently, Ashish headed Corporate Marketing, Asia Pacific Sales and Worldwide Sales functions in other IP companies. Ashish is currently the Vice president for Sales & Business Development at Interra Systems, based out of Interra’s headquarters in Santa Clara, California. He is actively engaged in the promotion and licensing of Interra’s IP’s in Electronic Design Automation & Memory Design in Asia and Europe and Digital Video Technologies globally. Ashish can be reached at [email protected].

intellectual property : the new frontier ashish basu 5 th august 2004

Documents

ip companies

protection of ip

new types of ip

hw1888ashish basu

conclusionashish basu

wipoashish basu

ip aware workforce

new frontierashish basu