INTEL CONFIDENTIAL1

Management of IPRs-Concept and tools

By

Sandeep Kapoor

Legal Counsel, South Asia

Intel Technology India Pvt. Ltd.

INTEL CONFIDENTIAL2

Objectives

• General overview of IPRs –why to protect, what is confidential information etc

• Management of IPRs

• IP Audit/Due diligence

• Common contractual pitfalls

• Key Takeaways

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Why protect IPRs?

• IPRs- Intellectual Property Rights are highly valuable assets for the company, its shareholders and its employees

• Identification and marking of IP portfolio very critical

• Generating additional revenue. For example, License fees, royalties, various other considerations

• Strong IP portfolios protects ones company from uncalled IP suits

• IPRs can be used as key consideration in contract terms and conditions

• It can prevent others from using same technology

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Confidential Information

Forms Part of “Intellectual Property”

Trademarks Trademarks Patents Trade SecretsTrade Secrets MaskworksMaskworks CopyrightsCopyrights

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Management of IPRs

• Documentation policy : classification, coding and storage of information, appropriate NDA’s-different classifications of NDAs depending upon the information shared.

• IPR protection policy : clear and crisp IPR policy covering -guidelines for internal as well as external stakeholders – [privacy policy, internet usage policy, legal notices to be used for external and internal communications, trademark usage policies, patent protection methods, copyright policy, vendor management policies]

• Content review policy : any external communication should pass through proper examinations- eg:white papers, presentations, publications in technical journals, seminars etc should follow the IPR policy and internal guidelines

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IPR Management contd….

• On site and offsite vendor management policy : rules for access control for contractual employees present onsite –dungeons on site tendency to misuse your T.M.s- working relationship comes with obligations and respect- un-authorized reference not allowed- vendor endorsement policy

• Third party protection- IP contamination leads to huge risks of infringement and consequential damages through law suits

• IPR management and employees :– are employees subject to non-competition agreements? – has each employee signed a confidentiality agreement? – access on need to know basis- concept of Chinese wall– regular trainings to employees – Legal entry and exit interviews– Approvals of IP plans– Management owns release of confidential material

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Proactive IPR Audit/ Due diligence

• Periodic, systematic and effective audit of IP portfolio leads to effective results

• Scope of audit depends on size, extent, nature and management philosophy for IPR

• Areas to be covered:– Trademark- registration, renewals, licenses-inbound and outbound,

infringement, regular search, common law and registration notice usage etc

– Patents- IDFs, filings, prosecution, registration, renewals, recordings of date and movement, prior art search, validation claim, litigations-claim etc

– Copyright-registration, structuring of employment and consultancy complete assignment, proper notices etc

– Trade secrets-assessment of security precautions, need to know basis rule, codification and classification, documents storage and access control rules, external communication policy etc

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Contractual Pitfalls - How to mitigate?

Confidential Information: In Star India Private Limited v. L. S. Nayak and Anr.[2003 (3) MhLJ 726]: Court refused to grant injunction against 2 employees who resigned to join rival company on the ground confidential information not properly defined

Non compete clause: In Niranjan Shankar Golikari v. The Century Spinning and Manufacturing Company Limited [AIR 1967 SC 1098]: Hon’ble S.C. held it that a non-compete clause in the employment agreement would be enforceable only if in so restraining the employee, the employer seeks to protect some of its proprietary interests which may have been divulged to the employee during the course of employment if employee agree

Confidentiality protection post termination: In Weiler International Electronics Pvt. Ltd. v. Punita Velu Somasundaram [2003 ARBlr 533 Bom] , the court refused to enforce a confidentiality clause because its applicability after termination of employment was not restricted in time

Employee Vs consultants: Assignment issues

[DO NOT FORGET TO STAMP THE AGREEMENTS-BIG ENFORCEMENT ISSUE]

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Key Takeaways

• IPRs are important non tangible assets requiring effective strategy for protection and safeguarding

• Recognition of IPR at early stage very critical

• Management techniques would vary from org to org-one size fits all is not right approach

• CS and law professional are very critical resources in entire process

• Effective and regular training must for keeping high visibility on IP portfolio

• For technical matters rely on experts advise- important to involve them early in the process

• Millions of pending cases with billion $s at stake –time to wake up