session title protecting your intellectual property (ip)

Session TitleProtecting your Intellectual Property

(IP)

Presentation Plan

Introduction to Intellectual Property (IP)

Patent Protection Basics

Monetization and Enforcement of Patents - Case Studies of Indian and Global Patent Successes

Common Patent Myths

Recent Patent Trends

Intro to IP

What is IP?Any creation of human intellectMost of the times associated with a commercial value

Examples of IP around you?

Inventions Marks

DesignsArtistic works

Geographical Indication (GI)

What are IP laws?

Indian IP Laws

1.Inventions - Indian Patent Act, 19702.Marks – Trademarks Act, 19993.Industrial Designs – Design Act, 20004.Literary Works – Indian Copyright Act, 19575.GI - Geographical Indications of Goods (Registration and Protection) Act, 1999

Key Features of Indian IP Laws

1.Creates private rights (Intellectual Property Rights or IPRs)2.Violators liable for civil and criminal action3.Rights transferrable and licensable just like property rights4.Restricted to jurisdictions5.Requires registration

Note: No specific laws to protect trade secrets

Involves creating, vesting, and using exclusive rights for intellectual creations such as

1. Musical, literary, artistic works…2. Words, phrases, symbols, aesthetic creations…3. Product, processes…

Intro to IP

Forms of IPR

PatentsTrademarks

Forms of IPR

Industrial Design

• Artistic works• Lifetime of author + 50 years or 50 years from date of

publication acc to the case• Registration required but not compulsory

Copyright

Trade Secrets

• Protects inventions• 20 years• Full disclosure of your IP to

public• Registration mandatory

• Marks/Words/Phrases• 10 years (Can be

extended infinitely)• Registration required but

not compulsory

• Designs – Aesthetics • 10-15 years• Registration mandatory

• Processes/Compositions• Infinite term • No registration required

Single Product – Multiple IPRs

1. Composition: Patent or Tradesecret

2. Process of making: Patent or Trade secret

Bottle Design: Design patent

Glenfiddich Logo: Trademark

Scotch: GI

Presentation Plan




Common Patent Myths


Basics of Patents

1. Essence: Granted as an exclusive right by government for an invention in consideration by the disclosure of the invention by an applicant

2. Limited Period of Protection = 20 years

3. Excludes others from an unauthorized act of making, using, offering for sale, selling, or importing the patented invention during the term of the patent

4. Territorial right

5. Can be extended internationally to all major markets - protection facilitated through filing Patent Cooperation Treaty (PCT) applications or Paris Convention applications

Key Facts

Total No. of Patents in Force in the World (till 2008) = 6.7 million ! Total No. of Patents in Force in India (till 2008) = 30,820

Sources: WIPO Stastics Report, 2010Annual Report, IPO

For an invention to be patentable, it should be:

1. Novel - Should not be

Published any where in the world, or

Used in a country, or

Disclosed in any patent application, or

Part of Prior Knowledge anywhere in the world

2.Non-obviousness (Inventive Step)

3.Has an Industrial Application

Basics of Patents

What is Patentability?

4. Should not fall under exclusionary class – Examples Business Methods etc

Patent Procedure – Types of application

PCT Application – For foreign filings

1. Facilitates filing in foreign countries

2. Should be filed within 12 months from filing of provisional or regular application, whichever is filed earlier

3. Gives 30 or 31 months to the inventor to decide

4. International publication of your invention

5. Provides International Search Reports (ISRs) and International Preliminary Examination Report (IPER)

Provisional Application

1. Temporary application that may be filed to protect priority

2. Easy to file – Requires basic formalities

3. Results in no rights until followed by a regular patent application

Regular Application – Very Critical

1. Should be filed within 12 months of the provisional application (if filed)

2. Includes claims

3. Results in rights after examination

Stages of Patent Procedure

Presentation Plan




Common Patent Myths


Myth 1 – Patents are only for pharmaceutical compositions or medicines

Patents can be for Anything

US Patent No. US4233942. A device for protecting the ears of a long-haired dog from becoming soiled by food while it is eating. A tube contains and protects each of the dog's ears. The tubes are held away from the dog's mouth and food as it eats.

http://l2.espacenet.com/dips/viewer?PN=US4233942

Patents can be for Anything

US Patent No. US6637447 provides a device provides a small umbrella ("Beerbrella") which may be removably attached to a beverage container in order to shade the beverage container from the direct rays of the sun.

http://patft.uspto.gov/netacgi/nph-Parser?TERM1=6637447&Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/PTO/srchnum.htm&r=0&f=S&l=50

Myth 2 – Patent rights are global ORYou can obtain a worldwide patent

1. The patent rights are restricted to the jurisdiction in which the patent is granted

2. A patent granted by United States Authorities DOES NOT unenforceable in India

3. Patent Corporation Treaty or PCT is only an international treaty that facilitates patent filing in multiple countries

4. World Intellectual Property Organization (WIPO) is only an administrator

5. WIPO DOES NOT grant worldwide patents

6. Regional patent offices, such as European Patent Office (EPO), do not grant patent rights in the entire region. The approval is only on the patent and the patent is required to be validated in countries of choice (elected states)

Patent rights are local – There is NO worldwide patent

Myth 3 – Software are not patentable in India they are copyrightable

1. Section 3 (k) of the Indian patent act excludes software per se

2. Indian IP laws mandate copyright protection for software

3. However, companies, such as Microsoft and IBM, are regularly obtaining patents in India

Not entirely true

The present norm is: Software embedded on a machine, and driving the machine are patentable

Software claims are allowed in US and to some extent in Europe

Myth 4 – Patents are very expensive to obtain

Presentation Plan




Common Patent Myths


Recent Patent Trends - India

1. IPR is becoming serious business in India

2. Trademark Reforms in 1999; Patent reforms in 2005

3. IPR reforms reflect seriousness of the government

4. Rapid growth in patent filings (21% annual growth in 2006-07)

5. 75+ patent infringement cases in High Courts

6. At least 2 patent litigations in Supreme Court

7. IP is becoming an important business strategy for Indian companies.

8. Three fold increase in the number of patent applications filed at the Indian Patent Office (IPO) during the last six years

9. 20% annual growth in granted patents in 2008-09

10. ~ 80% patent applications belong to foreign residents in 2008-2009

Presentation Plan



Monetization and Enforcement of Patents - Case Studies of Global and Indian Patent Successes

Common Patent Myths


Patent Monetization

Ways of Monetization

Polaroid Vs. KODAK - Instant Camera StoryPolaroid inventor of instant camera : broad patents obtained in 60’sK started developing own technology to beat P’s patents & introduced their version of the instant cameraP sued K. for infringement of 12 patents - won the suit and awarded more than US$ 1 Billion drove K out of instant picture business for 15 years!

Patent Power

Foreign Stories

Kodak Vs. Fuji - Single Use Camera StoryK prepared broad patent base in US though Fuji was first in the technologyK established dominant business in US Fuji’s late entry compelled it to compete with 28 others!!

Patent Power

IBM StoryCreated a subsidiary company IBM Intellectual Property Licensing in 1990searns more than $ 1 B per year from royalties

> 30 % of net profits!!!!

Texas Instruments Storyleading manufacturer of patented transistor in 50’s 70’s & 80’s: lost market to Japanese copy cat productsTexas regains ground in late 80’s by aggressive patenting strategyForcing licensing on Japanese - and earning billions in royalties!!

Patent Power

Indian Stories

In 2007, Bajaj sued TVS for allegedly infringing Bajaj’s Digital Twin Spark Ignition Technology

Madras High Court initially grants an interim injunction but later vacated by Supreme Court

The injunction for an year TVS Motors incurred a production and sales loss of ` 1 Billion (~ USD 23 Million) in litigation, loss of goodwill and decline of share value

Ahmadabad based Troikaa Pharma has reportedly spent `3 Crores on obtaining on patent protection on its ‘Dynapar AQ’, a diclofenac or painkiller injection

The company has already sealed licensing deals in Australia and has entered into licensing negotiations in Europe

Session TitleProtecting your Intellectual Property

(IP)

session title protecting your intellectual property (ip)

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