IP Value & Patenting'13

8/14/2019 IP Value & Patenting'13

1/100

Creating Valuethrough

INTELLECTUAL PROPERTY

Presented by

Anuradha Maheshwari

Lex Mantis, Advocates Legal Consultantswww.lexmant is .com

2013 (c) Anuradha Maheshwari, LEX MANTIS


2/100

Scheme of Presentation

Understanding locked value in IP

IP in IT

Protecting IPBest methods

Debates & Issues

Extracting value



3/100

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 property2013 (c) Anuradha Maheshwari, LEX

MANTIS


4/100

Knowledge Power

Knowledge = proprietary informationthat 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 frominception to crystallization - formulas,

concepts, architectural designs etc.

Traded in the form of sale,technology transfers, licenses,franchises, merchandising etc.



5/100

Intellectual Property Innovative idea behind the

technology.

Any creation of the human mind-

locked 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.



6/100

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


7/100

Knowledge PowerTo 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 puton these intellectual creations

Marlin Bennett in Knowledge Power



8/100

Intellectual Properties

Statutory IPs Common Law IPs

Patents

Copyrights

Trademarks

Industrial Designs

Geographical Indications Plant Varieties

Semi Conductors

Biodiversities

Unregistered TMs

Trade dress Trade secrets

Confidential Information

Technical Knowhow

Client list

Info on sourcing of rawmaterials

HR management

Traditional Knowledge



9/100


10/100

Copyrights Indian Copyright Act 1957-1999Patents Patents Act of 1970-2005

Trademarks Trademarks Act of 1999

Geographical indications Geographical Indications Act-1999Industrial designs Designs Act of 2000

Layout Designs of IntegratedCircuits

Semi Conductor, IC Layout DesignAct,2000

Plant varieties Protection of plant Varieties &Farmers Rights Act,2001

Biodiversity Biodiversity Act 2002

Undisclosed information-tradesecrets Indian Contract Act 1871

IP in India- TRIPS Regime



11/100

Constitution of IP


Intellectual Property

Ownership

Intangibles

Labor intensive

Time boundTransferable

Bundle of Rts

ValuableAssets

xxxxxxxxxxxxxxProtected

a

M

a

h

e

s

h

wa

r

i

,

L

E

X

M

A

N

T

I

S


12/100

The Hidden Value

Economicgrowth

Knowledge+

Imagination

Idea

(solution)

Innovation(product)

IntellectualProperties

(hiddenvalue)

Commerce

IP is not wealth -

it is a tool that

properly used will

produce wealth



13/100

Intellectual Property Rights Umbrella term

Legally protected rights& assets created out of goodideas - exercise of the human intellect

Bundle of exclusive rightsof 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, LEXMANTIS


14/100

History of Indian Patent System

1856 The Act of 1856 on protection of invention

1911 Indian Patents & Designs Act

1972 Patents act (act 39 of 1970)

only process patents | 14 year, 7 year (food/drug)

1975 India joins WIPO

1999 India signs TRIPS (after joining WTO)

10 year ultimatum starting from 19951999, 2002,

2004, 2005

Amendments

-Product patents | 20 years patent period | EMR | Burden of

Proof



15/100

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.



16/100

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 yearso 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 Rightclaims, ownership & transfer

Patent Act 2005-Patent means a patent for any invention

granted under this Act



17/100

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 non-scientific (music, story

Material progress of the global community has been

immensely impacted and aided by a wide variety ofInventions

Estimated 3.5 million unexamined patent

applications Over 2 hundred years the USPTO has granted more than 5

million patents2013 (c) Anuradha Maheshwari, LEX MANTIS


18/100

Not Patentable

Atomic energy

Traditional knowledge

Scientific principle/ Abstract theory/frivolous theories

Mathematical or business methods/algorithms or computer

programper se Discovery of natural substances

New form of a known substance

Mixture of known compounds

Methods of agriculture2013 (c) Anuradha Maheshwari, LEX MANTIS
http://images.google.com/imgres?imgurl=http://www.serenityphotography.co.uk/People%20-%20Portraits%20and%20Pictures%20of%20People%20from%20Around%20the%20World/Oxen%20Cart.JPG&imgrefurl=http://www.serenityphotography.co.uk/People%20-%20Portraits%20and%20Pictures%20of%20People%20from%20Around%20the%20World/slides/Oxen%20Cart.html&h=500&w=500&sz=258&hl=en&start=23&sig2=BKJwTzJZZZ6dKq4ADG-lqA&um=1&tbnid=1SemU4wUknpuGM:&tbnh=130&tbnw=130&ei=5EQ8Rp7HHpXYgAP2jLT2CQ&prev=/images?q=oxen&start=20&ndsp=20&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Nhttp://images.google.com/imgres?imgurl=http://www.xango.com/images/mangosteen-tree.jpg&imgrefurl=http://www.xango.com/learn/mangosteen-tree.html&h=282&w=460&sz=58&hl=en&start=15&sig2=lBpp9Tp9IJOLawzYpeTEHQ&um=1&tbnid=BhwI4q0IFfa1AM:&tbnh=78&tbnw=128&ei=skQ8RpDCOp6oggPs5fzIAg&prev=/images?q=tree&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Ghttp://images.google.com/imgres?imgurl=http://www.bestayurveda.com/ayurveda_leaf.jpg&imgrefurl=http://www.bestayurveda.com/&h=250&w=299&sz=10&hl=en&start=3&sig2=ZXbKeFEvGmrppsvRhzulwQ&um=1&tbnid=mFqvICaYuX6rnM:&tbnh=97&tbnw=116&ei=dEQ8RpS1FqKQggPx2IDFAg&prev=/images?q=ayurveda&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Ghttp://images.google.com/imgres?imgurl=http://www.rb-29.net/HTML/04.PAAvtnArt/PAShowScans/LateAdditions/A-Atomic.jpg&imgrefurl=http://www.rb-29.net/HTML/04.PAAvtnArt/04Fantasy/12Fantasy.htm&h=364&w=504&sz=87&hl=en&start=13&sig2=OZMtp5YZXAWQIX9Qp-amsw&um=1&tbnid=Gs6Kiv10wF6ubM:&tbnh=94&tbnw=130&ei=T0Q8RvfEO5_0gQP3y-XzCQ&prev=/images?q=atomic+energy&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=N


19/100

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 ofwidespread benefit

A process of treatment of human beings, animals or plants- treatmentof muscular spasms.

Mere discovery of new form of known substances which does notimprove 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



20/100

Patent Protection Patentability Criteria

o New & useful- novelty

o Non-obvious- inventive step

o Capable of Industrial

Applications- utility

Patents Act specifieso What are not inventions?

o What are not patentableinventions?

Process to acquirePatents



21/100

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 bewrong to prevent a man from doing what he has lawfully

done before the patent was granted



22/100

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 requiresreasonabletrials in public and application is made in 12 months

Use and Publication after provisional specifications

No Anticipation



23/100

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 subject-

common 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 obviousto person skilled in the art



24/100

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



25/100

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



26/100

Features of Computer Programs

Ingenuity in the idea forming the innovation -it maybe 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 hybridtext and behaviour

Innovation is largely incremental & rapid

Almost every 2 years a product is replaced by its

enhanced version



27/100

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



28/100

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 hardware2013 (c) Anuradha Maheshwari, LEX MANTIS


29/100

Towards Patenting

Gottschalk v Benson 409 US 63 (1972)-o Algorithm convertingBinary Code Decimal into pure binaryo 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 calculaterubber 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 ispatentable

Another Ruling- software could be patented when novelty

exists in the system taken as a wholeopened flood gates for

business methods2013 (c) Anuradha Maheshwari, LEX MANTIS


30/100

AT&T Corp v. Excel Comms.

1999-Patent claimed a process using aBoolean 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 resultwithoutpreempting other uses of the principle.

Held patentable & became a benchmark.



31/100

Indian Position

Indian Patent Officer granted a patent for an invention titledSystemfor creating an Application Program Packagein 1996

Patents (Amendment) Act 2002 brought in Section 3(k) excludedfrom the definition of an invention: A mathematical or businessmethod 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



32/100

SOURCE: Annual Report (2010-11) by the Office of the Controller

General Of Patents, Designs and Trademarks andGeographical Indications


33/100

SOURCE: Annual Report (2010-11) by the Office of

the Controller General Of Patents, Designs

and Trademarks and Geographical Indications


34/100

SOURCE: Annual Report (2010-11) by the Office of

the Controller General Of Patents, Designsand Trademarks and Geographical Indications


35/100

Drafting Software in IndiaDrafting of computer related specifications:

A claim to the computer program in physical ormaterial form, as distinct from the program as anabstract concept

A claim to a computer, or combination of anumber of computers, containing the program

A claim to the process, which the program causes

to take place within the computer when theprogram is operated



36/100

What is Not Patentable Computer programper se

Mere algorithm, business methods

Software that lacks technical effect

Methods with technical effect but lacking

hardware support



37/100

World ViewPatentability requirements in regards to software &

business methods can be categorised into the

following:

Economic utility requirement in Australia, NewZealand 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.



38/100

TRIPs Provisions Computer programs to be regarded as literaryworks

under copyright law

Registration not mandatory for copyright

Copyright to extend 50 years beyond death of author

Patents to be granted in all fieldsof technology



39/100

Copyright Protection Protects the text and not the results of a

program

Allows the independent development of thesame 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, consideringshort shelf-life of software



40/100

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



41/100

Specifications Specification- technical document describing the

invention

Maybe provisional or complete

Purpose- to make available invention to public onexpiry of patent, to reward a genuine inventor, to guardagainst any harm to public

Essence of the invention- builds the boundaries aroundthe monopoly right of the inventor- anything outsidethe specification cannot be claimed

Specification has to be drafted by skilled professional



42/100

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

filing2013 (c) Anuradha Maheshwari, LEX MANTIS


43/100

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 claimedinvention.

Content- Title of the invention

- Full description and disclosure(including best method ofperforming)

- Claims- defining scope of invention- clear and precise

- Drawings (if any)- Abstract

- Declaration of inventorship



44/100

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)

Anatomy of Specifications



45/100

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

Description



46/100

Claims

Legally defines thescopeofInvention

Boundary


Cl i


47/100

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 asdescribed 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

broad2013 (c) Anuradha Maheshwari, LEX MANTIS

Cl i E l


48/100

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.



49/100

Patent of Addition Patentee can apply for a patent in respect of any

improvement or modification of his protectedinvention

Such patent for improvement is called patent ofaddition or patent for incremental innovation

Term is the same for the remaining period of themain patent

Benefits of filingthe new application gets thesame priority date as that of the parentapplication and same fees


Wh C A l ?


50/100

Who Can Apply?

Any person claiming to be the first & trueinventor- 1stperson to convert the ideas &

scientific principles into a working invention-

physics teacher & his student

Assignee of the true & 1stinventoremployer

Legal representative of any deceased person

who immediately before his death was entitledto make this application

Indian Patent Act follows the first to apply

system and not first to invent2013 (c) Anuradha Maheshwari, LEX MANTIS


51/100

Inventor -true & first

Assignee of Inventor

Legal Representative of Inventor or

Assignee

Who Can File?



52/100

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 theinventor/scientist



53/100

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 Indiafor Foreign applicants

Where to File?



54/100

MumbaiGujarat, Maharashtra,

Madhya Pradesh, Goa,Chhattisgarh, the UnionTerritories of Daman & Diu

and Dadra & Nagar Haveli. Delhi

Haryana, Himachal Pradesh,Jammu and Kashmir, Punjab,Rajasthan, Uttar Pradesh,

Uttaranchal, National CapitalTerritory of Delhi and theUnion Territory of Chandigarh

Chennai

Andhra Pradesh, Karnataka,

Kerala, Tamil Nadu and theUnion Territories of

Pondicherry and Lakshdweep Kolkata

Rest of India

Filing Jurisdictions


H T Fil ?


55/100

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 statusof 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 bycomplete 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


Kinds of Applications
http://www.ipindia.nic.in/http://www.ipindia.nic.in/


56/100

Ordinary application

Conventional application

PCT national phase application Divisional Application

Patent of Addition

Cognate application

Kinds of Applications



57/100

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

Documentary Requirements



58/100

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)

Documentary Requirements



59/100

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

Publication



60/100

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)

Particulars of Publication


E i i


61/100

Subject to satisfaction of two conditions:

Application is published in the Patent Journal

Request for examination has been made by theapplicant or any person interested.

Person interested includes a person engaged

in, or in promoting research in the same field asthat to which the invention relates

Examination


d


62/100

Voluntaryby filing form 13

To overcome the objection raised by

examiner on issue of sufficiency, clarity orpatentability

Should not go beyond disclosure

Must be by way of disclaimer, correction orexplanation.

Amendments


d


63/100

Patent Grant Procedure

Filing of patent application

Publication after 18 months

Examination: Grant or Refusal

Publication of grant

Opposition to grant of patent

Request for Examination

Opposition by representation


Procedural Flowchart


64/100

Procedural FlowchartBASIC CONVENTION

APPLICATION

INDIAN CONVENTION

APPLICATION

PROVISIONAL

APPLICATION

REQUEST FOR EXAMINATION

(within 48 months from date of priority or date of

filing whichever is earlier)

PUBLICATION

(18 months)

PCT INTERNATIONAL

APPLICATION

INDIAN NATIONAL

PHASE APPLICATIONCOMPLETE PATENTAPPLICATION

FIRST STATEMENT OF OBJECTIONS

(May consider Representation)

GRANT

REPRESENTATION

(After publication, till grant)

RESPONSE TO OFFICE ACTION

REJECTION

Within 3 months from the

date on which the

Reference is made by the

Controller to the Examiner

12 months31months 12 months

RE-EXAMINATION

2013 (c) Anuradha Maheshwari, LEX

MANTIS

G d f O iti


65/100

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 knowledge2013 (c) Anuradha Maheshwari, LEX MANTIS

P Ri h


66/100

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



67/100

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 ofthe government eg. distribution of medicines and drugs

during epidemics or any emergency.


C l Li


68/100

Compulsory License

After three years of patent, anyone can request a licensefrom the govt. on these grounds

That the reasonable requirements of the public withrespect to the patented invention have not beensatisfied

That the patented invention is not available to thepublic at reasonably affordable price

Export of pharmaceuticals to poor countries


Revocation & Surrender


69/100

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 theinvention 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,

fraudulent etc.2013 (c) Anuradha Maheshwari, LEX

MANTIS

I f i t f P t t


70/100

Infringement of Patents

Infringement constitutes- colorable imitation,immaterial variations, mechanical equivalents,

taking essential features of the inventions

Infringement to be decided on facts of eachcase

Doctrine of pith & marrow is the essence of

the invention which if taken and reproducedin the infringed article by making a variation

would result in infringement- substantial

similarity2013 (c) Anuradha Maheshwari, LEX MANTIS

A f f


71/100

Action for Infringement

Suit for infringement

Prayers

- Interim injunction- Damages or account of profit

- Permanent injunction



72/100

IP Leveraging Strategies

Licensing

Business Format Franchising

Joint Ventures

Strategic Alliances and Partnering

Branding


Commerce of Technology


73/100

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 itstechnology available to a commercial partner that will exploit the technology


How Much is the IP worth?


74/100

How Much is the IP worth? Valuating/pricing intangible property-complex

Important to fix price of the property and thefinancial 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



75/100

Thank You


MANTIS

Software Piracy


76/100

Software Piracy Business Software Alliance (BSA)released its

annual report on software piracy for 2009which calculated that the commercial value ofunlicensed software that found its way into

global markets last year totalled $51.4billion.

This figure represents a global rise in softwarepiracy from 41% in 2008 to 43% in 2009.

High piracy markets such as Brazil, China andIndia.


MANTIS

Android Woes
http://www.bsa.org/country.aspx?sc_lang=enhttp://www.bsa.org/country.aspx?sc_lang=en


77/100

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 preventGoogle from continuing to benefit from BT's inventions without authorization," thelawsuit 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 inthe future

A large number of companies - Apple, Oracle, Microsoft and eBay are currently in legaldisputes with Google and its Android software over patent infringement.

This could be incredibly costly for Google, as its Android system controls more than 40percent of the smartphone market, with more than 40 million devices being producedevery quarter.

The late Steve Jobs was famously outraged at Android, which he believed had stolenmany patents and ideas from Apple and its iOS operating system used by the iPhone,iPad and iPod touch.


MANTIS

Infringement Battles
http://www.scribd.com/doc/75995499/11-12-15-BT-v-Google-Complainthttp://www.scribd.com/doc/75995499/11-12-15-BT-v-Google-Complainthttp://www.scribd.com/doc/75995499/11-12-15-BT-v-Google-Complaint


78/100

Infringement BattlesORACLE 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 SamsungElectronics, Motorola Mobility and HTC.

APPLE V SAMSUNG: in April this year, claiming Samsung's Galaxy line of smartphones and tablets infringe severalpatents 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 againstHTC 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 thesoftware 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.

HTChas 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, andhandset 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 InMotion in January 2010, arguing Apple's iPhone and RIM's camera-enabled BlackBerrys infringe a Kodak patentrelated 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 Appleagreed to make an undisclosed one-off payment and pay royalties.

MOTOROLA MOBILITY V MICROSOFT: over patent royalties, accusing Microsoft of infringing patents related tovideo game systems.


MANTIS

Other Wars


79/100

2/22/2013

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 detectcancers and other diseases

Nokia Pays $253 mln to settle patent dispute with InterDigitalCommunications Corporation over a licensing deal for 2G wirelesstechnology in December 2005.

Medtronic awarded $51m in patent infringement case againstBrainLAB AG involving four patents related to image-guided surgicaltechniques and devices.

Microsoft, Autodesk ordered to cough up $133M ( 115 + 18) to a

small technology company Z4 in damages in a patent battle over anti-piracy technology.

Chinese co Proview Technology is suing Apple for CNY10 billion(US$1.57 billion)for trademark infringement for the companysChinese trademark on IPAD.


MANTIS

f d


80/100

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


MANTIS

C l i


81/100

Conclusion

IP can be valued at every stage from itscreation 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 harnessingit to the fullest.


MANTIS

J t Ai


82/100

JetAirways 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 iscontrolled by Naresh Goyal through his ownership of Jets parentcompany, Tailwinds

Naresh Goyal, who already owned Jetair (Private) Limited, which providedsales and marketing for foreign airlines in India, set up Jet Airways as afull-service scheduled airline to compete against state-owned IndianAirlines

JetAirways trademark was not registered in name of the company bythat 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.


MANTIS

J t Ai


83/100

JetAirways Major reservation against the IPO was recorded in investors feedback as

the ownership of brand name being with Jet Enterprises & not with JetAirways

Jet Airways then decided to buy the brand from Naresh GoyalsJetEnterprises.

In fact, the non-ownership of Jet Airways brand was listed as a risk factorin the airlines draft prospectus

Jet Airways, has bought back the 'right, title and interest' in the "JetAirways trademark from Jet Enterprise (JEPL), a company owned by itspromoter Naresh Goyal along with Mr Hasmukh Gardi, for a one-time feeof $7 million or around Rs 30.44 crore

Certain other variations of the Jet Airways trademark and certain otherrelated trademarks have also been licensed to Jet Airways by JetEnterprises on an exclusive non-assignable basis for use in India


MANTIS


84/100


MANTIS

EU Position


85/100

EU Position

Article 52 (2) (c) and (3) of the European PatentConvention state:

Schemes, rules and methods for performing

mental acts, playing games or doing business, andprograms for computers as such are notpatentable



86/100


MANTIS


87/100


MANTIS


88/100


MANTIS


89/100


MANTIS


90/100


MANTIS


91/100


MANTIS


92/100


MANTIS


93/100


MANTIS


94/100


MANTIS


95/100


MANTIS


96/100


MANTIS


97/100


MANTIS


98/100


MANTIS


99/100


MANTIS


100/100

Thank You!

Documents

IP Value & Patenting'13