MANAGEMENT of IPR

Prashant sunagar
MSRIT
Bangalore

NRDC, Bangalore

Management Perspective

MANAGEMENTS

VISION ON IPR

NRDC, Bangalore

MANAGING

IPR

AN

Managements Vision on IPR

Board

Level Decision
Budgeting
Development of Manpower Expertise
Business Perspective
Feel the need to Build-up Knowledge
Base

NRDC, Bangalore

Managing an IPR
Technology

transfer by licensing
(Do Business)
Look for infringements (policing)
Upgrading the development
Assigning rights to others
Resolve IPR ownership issues

NRDC, Bangalore

STRATEGY

BUSINESS

NRDC, Bangalore

IPR

IPR Strategy
The

bulk of Principles, Decisions and

Implementations that are Designed to
serve as to how the IP matters
pertaining to an Innovation are to be
handled with the entity, how they need
to be protected from Infringements
and how they can be best exploited
commercially.
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NRDC, Bangalore

Product Development Cycle

INTERNAL PROJECT
MANAGEMENT GROUP

POTENTIAL IPRs
MARKET SIZE

IDEA

COMPOSITION

FINANCIAL &
HUMAN
RESOURCE
REQUIREMENTS

NRDC, Bangalore

SERVICE
PROVISIONS

MANAGEMENT
PROVISIONS

Tools of IP Protection
Legal

Patent
Copyright
Trademark
Design Registration
Geographical
Indications
Layout Designs of
Integrated Circuits
Plant Varieties
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NRDC, Bangalore

Secrecy

Trade Secrets
(In-house
knowledge)
Family Secret

Which IP Protection
Tool?
No

SUPER HIT formula

Both useful (legal & secrecy), both

relevant
Depends on the IP and situation
Often

several tools are used

in combination
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NRDC, Bangalore

IPR Rights
Exclusive

rights to underlying IP
You can use it, sell it, dispose it
Right to stop others doing things with
IP
But cannot compel people to do
things with the IP
Option to enforce these rights
Where rights have been breached
can ask court to enforce
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NRDC, Bangalore

How do you make money from

IPR
Sell/Mortgage

Sell the underlying IP with rights

License
People pay you to use your IP
Need to carefully define the scope
of use
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NRDC, Bangalore

What should you protect?

Cant

protect every idea (nor should you)

Work out what can and cant be protected
Weigh up protectable ideas and their
value
Work out who will benefit from protection
Decide how much you have to spend
Be cautious!
Most patents never make money
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NRDC, Bangalore

Managing IPR in Organizations

Present Situation: Why ?
Mandate

for research (Overlapping/Redoing)

Role of managements in Research Limited
Co-ordination among divisions lacking
Knowledge of benefits from IPRs lacking
Limited funding for research
No clear IPR policy
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NRDC, Bangalore

Management of IP: Objectives

You

want to own all the IP and the rights

You want as few other people as possible to
have rights in the IP
WHO OWNS THE IP?
General Rule: A creator owns his/her IP
BIG exception #1: Law presumes that
employer of creator owns the IP
BIG problem #1: Joint ownership of IP
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NRDC, Bangalore

Employment and IP
Assume that everything you work on / invent
belongs to your employer
What about after-hours or hobbies?
In the course of your employment
You may / may not own depending on the contract
HOW TO AVOID THIS?
Read your employment contract thoroughly before
signing
Negotiate right to own the IP your create outside of
work / non-competitive with work
Use confession sheets

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NRDC, Bangalore

Joint Ownership of IP
Often two or more people or organizations will
work on same project
This can create joint ownership of IP
Separate ownership of distinct contributions (i.e.
improvements)
JO can cause big problems
Can cause commercial paralysis

Requires unanimous consent of all owners to do

anything (license, sell, develop, etc) with IP

Creates arguments about who owns what

Investors very reluctant to invest in projects with
joint IP

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NRDC, Bangalore

Claimants to your IP
Very

rare that one person contributes all the

IP for a product/processes
Often multiple people / organizations will
have claims or (worse) rights to your IP
Potential Claimants
Your employees
Consultants you have hired
Your organizations share holders / directors
The users of your IP i.e. customers
Third part IP providers
JV partners, etc
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NRDC, Bangalore

YOU HAVE TO BE VIGILANT

Need

to conduct regular searches for both

registered and non-registered IP rights
Patent databases
Internet
Directories of companies / organizations
Industrial magazines / journals
Failure to search can create a problem
Ignorance is no excuse
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NRDC, Bangalore

Licensing Your IP

Licensing more valuable option

Can you develop IP to necessary stage to license?
Can you identify, negotiate with and handle licensees?

Scope of the license What are you giving away

and what are you getting?
Exclusivity, duration, territory, product range & purpose,
enforcement rights, sub-licensing, assignment

Contractual rights & obligations

Can you revoke license if non-use
Can you monitor licensee activity?

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NRDC, Bangalore

Managing IPR in Organizations

New Situation: Results !
IPRs Jointly Developed by Scientists / Faculty
Intellectual Base of Organization Strengthened
(Leads to Attraction of Talent)
Recognition from Industry (for R&D as well as
Trained Manpower)
Motivation for all Employees to take-up Higher /
Advanced Education / Training
Motivation of Employees to Work on New and
unexplored Areas

Continued ..

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NRDC, Bangalore

Managing IPR in Organizations

New Situation: Results !
Income

Generated
Remuneration to Right Holders
Further Improvements or New Research
Less Dependency on External Finance
(e.g. Banks), Investors, etc
Self-sustenance

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NRDC, Bangalore

Knowledge is
Power

But !
ONLY IF
MANAGED WELL
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NRDC, Bangalore

Thank You
Questions Please

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NRDC, Bangalore