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Creating Value through INTELLECTUAL PROPERTY

Presented by
Anuradha Maheshwari Lex Mantis, Advocates & Legal Consultants w w w. l ex m a nt i s . c o m
2013 (c) Anuradha Maheshwari, LEX MANTIS

Scheme of Presentation
Understanding locked value in IP IP in IT Protecting IP Best methods Debates & Issues Extracting value

2013 (c) Anuradha Maheshwari, LEX MANTIS

Innovation Phenomenon
Process of ideation! Great ideas! Transformation of knowledge into new products, processes, and services Discerning & meeting the needs of customers; Improvements in marketing, distribution & service; Multidisciplinary connecting many spheres of activity. Multiplier effect sparking innovation in other areas. Transformational force changing industries, markets, and society Forms innovators intellectual property
2013 (c) Anuradha Maheshwari, LEX MANTIS

Knowledge Power
Knowledge = proprietary information that may or may not be shared Knowledge comes with a price tag = Product, Innovation Product = valuable expression, technology, mark, confidential info, design etc. Saleable asset at any stage from inception to crystallization - formulas, concepts, architectural designs etc. Traded in the form of sale, technology transfers, licenses, franchises, merchandising etc.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Intellectual Property
Innovative idea behind the technology. Any creation of the human mindlocked in a tangible form Intangible moveable property Private property legal protected Can be used, accessed, distributed creating variety of rights Valuable in protecting work / products that are difficult /costly to develop, but cheap to copy.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Finding Value in IP
In all saleable Ideas- technology, inventions, marks, etc Any stage from inception to innovations In the demand generated for the idea/product The Brand created by the demand In the ways of marketing- brand strategy/business methods Exploitation of the idea- licensing, franchising, etc Protecting the idea- infringement suits & damages All comprise intangible assets of the owner of the IP
Knowledge, information, creativity, inventiveness are rapidly replacing traditional & tangible assets as valuable drivers of economy.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Knowledge Power
To create something from nothing, in all the natural world is a uniquely human ability. Using our minds we originate works of arts, generate inventions, accumulate knowledge and discover truths about the world we live in. What sets the information age apart from prior periods in history is the price tag we put on these intellectual creations Marlin Bennett in Knowledge Power
2013 (c) Anuradha Maheshwari, LEX MANTIS

Intellectual Properties
Statutory IPs
Patents Copyrights Trademarks Industrial Designs Geographical Indications Plant Varieties Semi Conductors Biodiversities

Common Law IPs


Unregistered TMs Trade dress Trade secrets Confidential Information Technical Knowhow Client list Info on sourcing of raw materials HR management Traditional Knowledge

2013 (c) Anuradha Maheshwari, LEX MANTIS

Main Kinds of IP
Designs

GIs

TMs
Copyrights

Patents Major IPRs


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IP in India- TRIPS Regime


Copyrights Patents Trademarks Geographical indications Industrial designs Layout Designs of Integrated Circuits Plant varieties Biodiversity Undisclosed information-trade secrets Indian Copyright Act 1957-1999 Patents Act of 1970-2005 Trademarks Act of 1999 Geographical Indications Act-1999 Designs Act of 2000 Semi Conductor, IC Layout Design Act,2000

Protection of plant Varieties & Farmers Rights Act,2001


Biodiversity Act 2002

Indian Contract Act 1871

2013 (c) Anuradha Maheshwari, LEX MANTIS

Constitution of IP
Ownership Valuable Assets Intangibles

h a M a h e s h w a r i , L E X M A N T I S

Bundle of Rts

Intellectual Property

Labor intensive

Transferable
xxxxxxx Protected
2013 (c) Anuradha Maheshwari, LEX MANTIS

Time bound

The Hidden Value


Economic growth
Knowledge + Imagination Commerce

IP is not wealth it is a tool that properly used will produce wealth


Intellectual Properties (hidden value) Innovation (product) Idea (solution)

2013 (c) Anuradha Maheshwari, LEX MANTIS

Intellectual Property Rights


Umbrella term Legally protected rights & assets created out of good ideas - exercise of the human intellect Bundle of exclusive rights of two kinds: Privileges Exclusions Claims & entitlements Enjoyment only for a limited period of time Protected since 500BC but actively from the 15th century
2013 (c) Anuradha Maheshwari, LEX MANTIS

History of Indian Patent System


1856
1911

The Act of 1856 on protection of invention


Indian Patents & Designs Act

1972
1975

Patents act (act 39 of 1970) only process patents | 14 year, 7 year (food/drug)
India joins WIPO

1999
1999, 2002, 2004, 2005

India signs TRIPS (after joining WTO) 10 year ultimatum starting from 1995
Amendments -Product patents | 20 years patent period | EMR | Burden of Proof
2013 (c) Anuradha Maheshwari, LEX MANTIS

Object of Patent Law


To encourage scientific research, new technology and industrial progress Official system to reward fruits of ingenuity Legally recognize the exclusive right of a patentee to gain commercial advantage from his invention for a limited period. To grant monopoly rights to own, use or sell a patent.
2013 (c) Anuradha Maheshwari, LEX MANTIS

What is a Patent?
A patent is a granted Monopoly Right By the government - Controller o To an inventor or his assignee o For an invention o For a limited period- 20 years o Valid within the country of grant-territorial An Exclusive Right - prevents others from o Making, using, selling, licensing, or Importing the claimed invention Patent is a Property Right claims, ownership & transfer Patent Act 2005-Patent means a patent for any invention granted under this Act
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Invention
Invention is a successful technical solution to a technical problem. Inventions could be broadly broken up into 2 categories- scientific (engines, x-rays) or nonscientific (music, story Material progress of the global community has been immensely impacted and aided by a wide variety of Inventions Estimated 3.5 million unexamined patent applications Over 2 hundred years the USPTO has granted more than 5
million patents
2013 (c) Anuradha Maheshwari, LEX MANTIS

Not Patentable

Atomic energy Traditional knowledge Scientific principle/ Abstract theory/frivolous theories Mathematical or business methods/algorithms or computer program per se Discovery of natural substances New form of a known substance Mixture of known compounds Methods of agriculture
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Exceptions
Inventions that are frivolous- claiming anything contrary Inventions injurious to public health, morality or interest New method of agriculture or horticulture to prevent denial of widespread benefit A process of treatment of human beings, animals or plants- treatment of muscular spasms. Mere discovery of new form of known substances which does not improve known efficacy of the substance- isotopes New use of known substance or process or invention unless results in a new product Any medicinal, surgical treatments to render humans, animals free of disease or increase economic value of product Any invention created out of traditional knowledge Inventions relating to atomic energy
2013 (c) Anuradha Maheshwari, LEX MANTIS

Patent Protection
Patentability Criteria
o New & useful- novelty o Non-obvious- inventive step o Capable of Industrial Applications- utility

Patents Act specifies


o What are not inventions? o What are not patentable inventions?

Process to acquire Patents

2013 (c) Anuradha Maheshwari, LEX MANTIS

Newness/Novelty
Novelty of an invention is dependant on state of prior art Prior art-existing knowledge, similar inventions already known in the particular field No novelty in case of anticipation by prior publication or prior use- turmeric patent attacked on this ground Invention must be new- must involve innovation or technology not published in any document or used in the country or elsewhere Anticipation = Lack of novelty- principle that it would be wrong to prevent a man from doing what he has lawfully done before the patent was granted

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No Anticipation
Patent application filed before 01-01-1912 Published without the consent of applicant Communication to the Govt. for Investigation Displayed/Exhibited and notified* by Govt. in Official Gazette & within 12 months filed Prior reading- If Paper read by the inventor before Learned society & application is filed within 12 months thereafter Prior public working - If the invention requires reasonable trials in public and application is made in 12 months Use and Publication after provisional specifications
2013 (c) Anuradha Maheshwari, LEX MANTIS

Inventive Step
Invention must carry an inventive step to determine skill Step must be non-obvious to a person averagely skilled in art Person skilled in the art need not be an expert in the subjectcommon general knowledge is sufficient. What is obvious cannot be patented Should not be a logical outcome from the prior art Should not require any skill/ability beyond that may expect from the person skilled in the art. Not beyond normal progress of technology Invention involves Technical advancement and Economic significance and not obvious to person skilled in the art
2013 (c) Anuradha Maheshwari, LEX MANTIS

Usefulness
Invention must be useful Must be of benefit to mankind Must involve technical advance as compared to existing knowledge or have economic significance or both. Inventions having limited usefulness are protected in some countries as utility models Industrial activity - Can be made, used in at least one field of activity or reproduced with the same characteristics as many times as necessary

2013 (c) Anuradha Maheshwari, LEX MANTIS

Computer Programs/Software
WIPO: A set of instructions capable, when incorporated in a machine readable medium, of causing a machine having information processing capabilities to indicate, perform or achieve a particular function, task or result

2013 (c) Anuradha Maheshwari, LEX MANTIS

Features of Computer Programs


Ingenuity in the idea forming the innovation -it may be expressed in any language Made up of machine readable instructions As source code; object code; executable file Primary value lies in its functionality than code itself Nature of software is a hybrid text and behaviour Innovation is largely incremental & rapid Almost every 2 years a product is replaced by its enhanced version
2013 (c) Anuradha Maheshwari, LEX MANTIS

Issues of Protection
Why Software must be protected? Idea based, pure creativity Machines & systems run on software- greatly in demand High degree of innovation, short shelf life Unfair competition, piracy & counterfeiting- easy to reverse engineer To be or not to be? Patents or copyrights?- conflict & debates Issue stems from its creativity- invention or mere expression? Softwares are algorithm based and a logical abstract expression of process/ principle U.S. Copyright Law: A computer programme is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result
2013 (c) Anuradha Maheshwari, LEX MANTIS

Patenting of Software
Innovation in software industry rapid aided by patenting Helped growth of CP related industries in US especially for start-ups & individuals In Europe & India Software patenting not so popular until recently Emphasis on software/CP to be of technical nature- having technical application to industry or embedded in hardware
2013 (c) Anuradha Maheshwari, LEX MANTIS

Towards Patenting
Gottschalk v Benson 409 US 63 (1972)o Algorithm converting Binary Code Decimal into pure binary o Supreme Court held One cannot patent an idea; o The mathematical formula no practical application except in connection with digital computer; Diamond Vs Diehr 81- Arrhenius equation applied to calculate rubber curing time, held software in isolation remains unpatentable but program related inventions are patentable Re Alappat94 a claim for the use of general purpose computing equipment to perform a mathematical operation is patentable Another Ruling- software could be patented when novelty exists in the system taken as a whole opened flood gates for business methods

2013 (c) Anuradha Maheshwari, LEX MANTIS

AT&T Corp v. Excel Comms.


1999- Patent claimed a process using a Boolean algebra to derive a value that is used to generate a message record of long distance telephone calls for billing purposes. Held that the patent does not claim just the Boolean principle, but applies it to produce a useful, concrete and tangible result without preempting other uses of the principle. Held patentable & became a benchmark.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Indian Position
Indian Patent Officer granted a patent for an invention titled System for creating an Application Program Package in 1996 Patents (Amendment) Act 2002 brought in Section 3(k) excluded from the definition of an invention: A mathematical or business method or a computer programme per se or algorithms Software can be patented in India, such that;
o Method claim should clearly define steps in carrying out invention o They produce a technical/ mechanical effect- should solve a technical/ mechanical problem o Is associated to a mechanical system or device in such a way, to be capable of producing a functional or technical outcome o Fulfills other patentabity criteria o Claim orienting towards process/method should contain a hardware/machine limitation
2013 (c) Anuradha Maheshwari, LEX MANTIS

SOURCE: Annual Report (2010-11) by the Office of the Controller General Of Patents, Designs and Trademarks and Geographical Indications

SOURCE: Annual Report (2010-11) by the Office of the Controller General Of Patents, Designs and Trademarks and Geographical Indications

SOURCE: Annual Report (2010-11) by the Office of the Controller General Of Patents, Designs and Trademarks and Geographical Indications

Drafting Software in India


Drafting of computer related specifications:
A claim to the computer program in physical or material form, as distinct from the program as an abstract concept A claim to a computer, or combination of a number of computers, containing the program A claim to the process, which the program causes to take place within the computer when the program is operated

2013 (c) Anuradha Maheshwari, LEX MANTIS

What is Not Patentable


Computer program per se Mere algorithm, business methods Software that lacks technical effect Methods with technical effect but lacking hardware support

2013 (c) Anuradha Maheshwari, LEX MANTIS

World View
Patentability requirements in regards to software & business methods can be categorised into the following: Economic utility requirement in Australia, New Zealand and Canada; Machine-or-transformation requirement in the United States; Hardware requirement in Japan and Korea; and Technical effect requirement in Europe, China and India.
2013 (c) Anuradha Maheshwari, LEX MANTIS

TRIPs Provisions
Computer programs to be regarded as literary works under copyright law Registration not mandatory for copyright Copyright to extend 50 years beyond death of author Patents to be granted in all fields of technology

2013 (c) Anuradha Maheshwari, LEX MANTIS

Copyright Protection
Protects the text and not the results of a program Allows the independent development of the same code by a different person Does not protect:
o Internal design of a machine o Programs behaviour o The idea behind the program

Period of protection is excessive, considering short shelf-life of software


2013 (c) Anuradha Maheshwari, LEX MANTIS

Inventions To Be Disclosed
Through complete specifications Facilitates any one working the invention after patent expiry If not disclose patent may not be granted If granted and then discovered that full disclosure was not there then patent may be opposed

2013 (c) Anuradha Maheshwari, LEX MANTIS

Specifications
Specification- technical document describing the invention Maybe provisional or complete Purpose- to make available invention to public on expiry of patent, to reward a genuine inventor, to guard against any harm to public Essence of the invention- builds the boundaries around the monopoly right of the inventor- anything outside the specification cannot be claimed Specification has to be drafted by skilled professional
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Provisional Specification
Filed when the inventor is in the process of finalizing his invention It is filed to fix the priority date of the invention. The document is only a general description of the invention- it has no claims Provisional specification has to be followed by Complete specification within 12 months of its filing
2013 (c) Anuradha Maheshwari, LEX MANTIS

Complete Specification
Full description of the invention containing all claims over which inventor seeks monopoly right. The object is to define the boundaries of the claimed invention. Content - Title of the invention - Full description and disclosure(including best method of performing) - Claims- defining scope of invention- clear and precise - Drawings (if any) - Abstract - Declaration of inventorship
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Anatomy of Specifications
Title Field of Invention Background (prior art, problems) Object of Invention (solution, desired results) Summary (statement of invention) Brief description of Drawings Detailed Description of the invention Abstract (brief summary of entire specification)
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Description
Definition of key terms
Enablement - clear and concise enabling skilled person to make and use Best mode - best method of performing invention Preferred embodiments - various alternatives

Specific Examples
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Claims
Legally defines the scope of Invention
Boundary

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Claims
Most important part of the specification Main claim- states the what the invention is in the broadest possible terms Subordinate or dependent claims- refers to additional features Omnibus claim- relates to any arrangement substantially as described as shown in the drawings- protects applicant from infringement by creation of equivalent alternatives. Ex: for an instance when a feature of an invention is a movable coil with the help of a spring, the applicant must claim that any movable arrangement of the coil with spring or any other equivalent mechanism would be an equivalent variation of the invention. Validity of patent can be challenged if claims are too vague or broad
2013 (c) Anuradha Maheshwari, LEX MANTIS

Claims- Example
A flashlight for use with batteries, comprising:
a tube to hold the batteries; a lamp; to illuminate a holder mounted on the tube to hold the lamp; and a switch mounted on the tube,

The switch being manually movable between on and off positions and connecting the batteries to the lamp when in the on position.

2013 (c) Anuradha Maheshwari, LEX MANTIS

Patent of Addition
Patentee can apply for a patent in respect of any improvement or modification of his protected invention Such patent for improvement is called patent of addition or patent for incremental innovation Term is the same for the remaining period of the main patent Benefits of filing the new application gets the same priority date as that of the parent application and same fees
2013 (c) Anuradha Maheshwari, LEX MANTIS

Who Can Apply?


Any person claiming to be the first & true inventor- 1st person to convert the ideas & scientific principles into a working inventionphysics teacher & his student Assignee of the true & 1st inventor employer Legal representative of any deceased person who immediately before his death was entitled to make this application Indian Patent Act follows the first to apply system and not first to invent
2013 (c) Anuradha Maheshwari, LEX MANTIS

Who Can File?


Inventor -true & first Assignee of Inventor Legal Representative of Inventor or Assignee

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Employee Inventions
Inventions made during course of employment Relationship governed by contracts- express/implied Generally inventions made by employees would be patentable in their own name Employees specifically for R&D- patents in name of employers Right to apply has to be assigned by the inventor/scientist

2013 (c) Anuradha Maheshwari, LEX MANTIS

Where to File?
The patent office where the applicant Resides Has place of business Has originated invention The patent office depending on the jurisdiction of address for service in India for Foreign applicants

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Filing Jurisdictions
Mumbai
Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli.

Chennai
Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshdweep

Delhi
Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, National Capital Territory of Delhi and the Union Territory of Chandigarh

Kolkata
Rest of India

2013 (c) Anuradha Maheshwari, LEX MANTIS

How To File?
Application form in duplicate - (Form 1) Provisional or complete specification in duplicate. Provisional must be followed by complete within 12 months - (Form 2). Drawing in duplicate (if necessary) Abstract of the invention Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate - (Form 3) Priority document (if priority date is claimed) in convention application, when directed by the Controller Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application - (Form 5). International application can also be made under PCT Manually delivery of hard copy docs at the patent office by post/courier or hand delivery or E-filing through official portal at www.ipindia.nic.in
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Kinds of Applications
Ordinary application Conventional application PCT national phase application Divisional Application Patent of Addition Cognate application
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Documentary Requirements
Mandatory but can be filed later within prescribed time limit Statement and Undertaking (Form 3) Proof of right to apply (an assignment) Declaration of Inventorship Power of Attorney Request for examination
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Documentary Requirements
Optional requirements to expedite procedure Request for early publication (Form 9) Express request for examination - for PCT national phase application (Form 18 with additional fees)

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Publication
After 18 months from the date of filing U/S 11A except when Secrecy direction are imposed u/s 35 The application has been abandoned u/s 9(1) Withdrawn three months prior to the publication period

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Particulars of Publication
Number of Application Date of filing of Application Title of Invention Publication date International Patent classification Name and Address of the Applicant Name of the Inventor(s) Priority details Parent application no. in case of patent of addition or division Abstract of the Invention including drawing (if any)
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Examination
Subject to satisfaction of two conditions:
Application is published in the Patent Journal Request for examination has been made by the applicant or any person interested.

Person interested includes a person engaged in, or in promoting research in the same field as that to which the invention relates

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Amendments
Voluntary by filing form 13 To overcome the objection raised by examiner on issue of sufficiency, clarity or patentability Should not go beyond disclosure Must be by way of disclaimer, correction or explanation.
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Patent Grant Procedure


Filing of patent application

Publication after 18 months


Opposition by representation

Request for Examination


Examination: Grant or Refusal

Publication of grant
Opposition to grant of patent
2013 (c) Anuradha Maheshwari, LEX MANTIS

Procedural Flowchart
PROVISIONAL APPLICATION PCT INTERNATIONAL APPLICATION BASIC CONVENTION APPLICATION

12 months
COMPLETE PATENT APPLICATION

31months
INDIAN NATIONAL PHASE APPLICATION

12 months
INDIAN CONVENTION APPLICATION

REPRESENTATION (After publication, till grant) REQUEST FOR EXAMINATION (within 48 months from date of priority or date of filing whichever is earlier)

PUBLICATION (18 months)

Within 3 months from the date on which the Reference is made by the Controller to the Examiner

FIRST STATEMENT OF OBJECTIONS (May consider Representation) RE-EXAMINATION RESPONSE TO OFFICE ACTION

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REJECTION GRANT

Grounds of Opposition
Patent is wrongfully obtained Prior publication in any document Prior claiming Prior public use Obviousness Not an invention Insufficiency of description Failure to disclose information u/s 8 Conventional application is filed after 12 months Not disclose geographical origin of bio-material Anticipation reg. Traditional knowledge
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Patentee Rights
Exclusive right to use- inventor substantive rights for 20years from date of filing Monetary rights to exploit- sell, license assign & vend Exclude others from making /using invention Right to assign Right to surrender Right to sue for infringement

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Central Government Powers


Certain limitation on patent rights government use of patents Compulsory licenses and licenses of rights Use of inventions for defenses purposes Revocation for non-working patents Limitations on restored patents Central Govt. has right to use invention for purposes of the government eg. distribution of medicines and drugs during epidemics or any emergency.
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Compulsory License
After three years of patent, anyone can request a license from the govt. on these grounds That the reasonable requirements of the public with respect to the patented invention have not been satisfied That the patented invention is not available to the public at reasonably affordable price Export of pharmaceuticals to poor countries

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Revocation & Surrender


When the exercise of the patent is mischievous to state prejudicial to the public Where after grant patent is being used for invention relating to atomic energy Where a compulsory license is granted and the invention is not available to the public at a reasonable price By High court- when a patentee fails to comply with Government's request to use the invention By High court- on petition by interested person on grounds mentioned in s.64- not useful, harmful, 2013 (c) Anuradha Maheshwari, LEX fraudulent etc. MANTIS

Infringement of Patents
Infringement constitutes- colorable imitation, immaterial variations, mechanical equivalents, taking essential features of the inventions Infringement to be decided on facts of each case Doctrine of pith & marrow is the essence of the invention which if taken and reproduced in the infringed article by making a variation would result in infringement- substantial similarity
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Action for Infringement


Suit for infringement Prayers Interim injunction Damages or account of profit Permanent injunction

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IP Leveraging Strategies
Licensing Business Format Franchising Joint Ventures Strategic Alliances and Partnering Branding

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Commerce of Technology
Sale or assignment-transfer of ownership/titles exclusive rights to a patented invention/copyright/trademark.. License/License Contract- permission to use the IP limitedly Technology Licensing Merchandise & character licensing Know-how Contract- could be a license contract or could be direct Franchise or distributorship- reputation, technical info & expertise of one party is combined with the investment of another party to directly sell goods or render services to the consumer. Trade/service marks are also licensed Technology transfer is a process by which a developer of technology makes its technology available to a commercial partner that will exploit the technology

2013 (c) Anuradha Maheshwari, LEX MANTIS

How Much is the IP worth?


Valuating/pricing intangible property-complex Important to fix price of the property and the financial terms of the license What is the right price? How much can the company spend? Methods of valuation:
Cost approach Income approach Market approach

Royalty arrangements-regular payments for specific rights


2013 (c) Anuradha Maheshwari, LEX MANTIS

Thank You

2013 (c) Anuradha Maheshwari, LEX MANTIS

Software Piracy
Business Software Alliance (BSA) released its annual report on software piracy for 2009 which calculated that the commercial value of unlicensed software that found its way into global markets last year totalled $51.4 billion. This figure represents a global rise in software piracy from 41% in 2008 to 43% in 2009. High piracy markets such as Brazil, China and India.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Android Woes

British Telecom has sued Google's Android mobile operating system, as it believes that the software infringes six patents in its Maps, Music and Android Market applications. The lawsuit also claims that Android's location-based advertising also infringes on patents held by BT and the telecom giant is claiming billions of dollars of compensation. "BT brings this action to recover the just compensation it is owed and to prevent Google from continuing to benefit from BT's inventions without authorization," the lawsuit says. If the lawsuit is successful then it could mean that Google will have to pay BT royalties on each Android smartphone and tablet currently in use, and for any they produce in the future A large number of companies - Apple, Oracle, Microsoft and eBay are currently in legal disputes with Google and its Android software over patent infringement. This could be incredibly costly for Google, as its Android system controls more than 40 percent of the smartphone market, with more than 40 million devices being produced every quarter. The late Steve Jobs was famously outraged at Android, which he believed had stolen many patents and ideas from Apple and its iOS operating system used by the iPhone, iPad and iPod touch.

2013 (c) Anuradha Maheshwari, LEX MANTIS

Infringement Battles
ORACLE V. GOOGLE :Oracle is seeking damages of up to $6.1 billion from Google in a lawsuit filed in August 2010 claims Google's increasingly popular Android operating system violated patents that protect Oracle's Java software, which it bought through its acquisition of Sun. APPLE V. GOOGLE : Apple has also attacked Google's Android platform, by suing cellphone makers Samsung Electronics, Motorola Mobility and HTC. APPLE V SAMSUNG: in April this year, claiming Samsung's Galaxy line of smartphones and tablets infringe several patents and trademarks. Samsung then countersued, asserting its own patents against Apple. MOTOROLA AND APPLE: sued each other in October last year, while Apple filed patent infringement suits against HTC in March 2010. HTC later countersued. MICROSOFT V. GOOGLE :In October 2010, Microsoft charged its former ally Motorola, saying the U.S. phone maker infringed nine of its patents in Android-based smartphones. Motorola countersued a month later, accusing the software company of infringing 16 of its patents. MICROSOFT V BARNES & NOBLE: & its device manufacturers, Foxconn International and Inventec Corporation, claiming patent infringement in Android devices. HTC has agreed to pay royalties to Microsoft when using the Android platform in its phones. GEMALTO V. GOOGLE :Chipmaker Gemalto filed a patent infringement lawsuit in October 2010 against Google, and handset makers Motorola, HTC and Samsung over the Android operating system. KODAK V. RIM, APPLE :Photography company Eastman Kodak Co filed a complaint against Apple and Research In Motion in January 2010, arguing Apple's iPhone and RIM's camera-enabled BlackBerrys infringe a Kodak patent related to a method for previewing images. NOKIA V. APPLE: Nokia sparked a battle with the iPhone-maker, filing a case in the United States in October 2009, claiming Apple infringed 10 of its patents related to wireless communication. Nokia won in June, when Apple agreed to make an undisclosed one-off payment and pay royalties. MOTOROLA MOBILITY V MICROSOFT: over patent royalties, accusing Microsoft of infringing patents related to video game systems.
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Other Wars
GE forced to cough up USD 128.7 mln to a tiny company called Fonar for for infringing the latter's patented MRI technology, used to detect cancers and other diseases Nokia Pays $253 mln to settle patent dispute with InterDigital Communications Corporation over a licensing deal for 2G wireless technology in December 2005. Medtronic awarded $51m in patent infringement case against BrainLAB AG involving four patents related to image-guided surgical techniques and devices. Microsoft, Autodesk ordered to cough up $133M ( 115 + 18) to a small technology company Z4 in damages in a patent battle over antipiracy technology. Chinese co Proview Technology is suing Apple for CNY10 billion (US$1.57 billion)for trademark infringement for the companys Chinese 2/22/2013 trademark on IPAD. 2013 (c) Anuradha Maheshwari, LEX
MANTIS

Safeguarding IP
Companys IP rights viz-a-vis its employees IP and Freelance Contractors Secure IP & prevent IP infringement Protect companys identity & domain name Respect third party IP

2013 (c) Anuradha Maheshwari, LEX MANTIS

Conclusion
IP can be valued at every stage from its creation to its exhaustion Protection/Registration and enforcement of your IP rights strengthen the value of an IP Infringement suits add to the value Key lies in recognising the IP potential, awareness of the relevant laws and harnessing it to the fullest.
2013 (c) Anuradha Maheshwari, LEX MANTIS

Jet Airways
Jet Airways was incorporated as an air taxi operator on 1 April 1992 and is largest airline in India Company listed on the Bombay Stock Exchange, 80% of its stock is controlled by Naresh Goyal through his ownership of Jets parent company, Tailwinds Naresh Goyal, who already owned Jetair (Private) Limited, which provided sales and marketing for foreign airlines in India, set up Jet Airways as a full-service scheduled airline to compete against state-owned Indian Airlines JetAirways trademark was not registered in name of the company by that name but in name of the company of which Naresh Goyal was the promoter. For public subscription of the shares of Jet Airways, the company came out with an with an initial public offering (IPO) on February 18, 2005.

2013 (c) Anuradha Maheshwari, LEX MANTIS

Jet Airways
Major reservation against the IPO was recorded in investors feedback as the ownership of brand name being with Jet Enterprises & not with Jet Airways Jet Airways then decided to buy the brand from Naresh Goyals Jet Enterprises. In fact, the non-ownership of Jet Airways brand was listed as a risk factor in the airlines draft prospectus Jet Airways, has bought back the 'right, title and interest' in the "Jet Airways trademark from Jet Enterprise (JEPL), a company owned by its promoter Naresh Goyal along with Mr Hasmukh Gardi, for a one-time fee of $7 million or around Rs 30.44 crore Certain other variations of the Jet Airways trademark and certain other related trademarks have also been licensed to Jet Airways by Jet Enterprises on an exclusive non-assignable basis for use in India

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

EU Position
Article 52 (2) (c) and (3) of the European Patent Convention state:
Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers as such are not patentable

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

2013 (c) Anuradha Maheshwari, LEX MANTIS

Thank You!
2013 (c) Anuradha Maheshwari, LEX MANTIS