Origiin Newsletter December 2012 issue

7/30/2019 Origiin Newsletter December 2012 issue

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All rights reserved (C) Origiin IP Solutions 2012

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n this issuehecklist: Filing for a patent....... P.1

P News Bulletin ............... P.2

ews from Indian Patent Office. P.3

atentalk: Nithyananda S.............P.4

ichael Faraday: The

hemical History of a Candle.......P.7

nteresting patent of the month..P.7

A monthly

Newsletter

on issues

relating to

Intellectual

Property

Rights

S U E ( V o l u m e )

MONTH

December

Y EAR

2012

9 (2) Origiin Newsletter

Checklist: Filing for a patentBindu Sharma ([email protected])

Filing for a patent is a very exciting time

for any organization or an individual

inventor. Invention originates from an

innovative mind and putting it into

prototype may require long hours of hard

work and of course, funds, resources etc.

For an individual inventor, it is a pleasure

to be called as an inventor, whereas for an

organization, there may be various

reasons to file for a patent, as it may add

to the number of applications filed in a

given financial year or it might be for

securing invention before press

release/commercialization or quite often,

getting application number before talking

to investors, especially in case of start-

ups.

Though there are several factors which

determine the purpose and use of filing

for a patent, in order to actually realise

benefits of filing a patent application it is

critical to analyse following prime factors:

Is invention really worth a patent?

If invention is not in the market, often

inventors are very confident and feel that

invention is novel and there is no need to

perform patent search. Patents are a great

source of technical information and it

makes lots of sense to check them to

assess state of art before filing for a

patent. Patent law expects invention to be

novel, inventive and industrially useful,

hence, before proceeding with filing a

patent application, make sure that

invention fulfils these criteria. Though

patent officers are the final authorities to

decide on patentibility of the invention

but still such assessment of patentibility

can certainly be done with the help of a

patent attorney who knows the subject

matter well. Even if the search reveals

that invention is not novel, results of a

patent search give you fairly a good idea

about the amount of work already done

by others which assists in further

development of the invention in thr right

direction.

Selecting between provisional and

complete application

Provisional application shall be filed if

invention is at the stage of idea or if it is

Contact us

#51, MCHS, 15th Main,

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Phone: +9198456 93459

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Email: [email protected]

Websitesww.origiin.comww.origiinipa.com

logstp://origiinipae.blogspot.comtp://inventorshub.blogspot.com

ditors

nita Kaliahira A

Origiin wishes all readers Merry Christmas and a very Happy New Year

Merry Christmas &

Happy New Year2013

from

Origiin Team
http://en.wikipedia.org/wiki/Michael_Faradayhttp://en.wikipedia.org/wiki/Michael_Faraday


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critical to claim earliest priority date or if funds need to

be arranged. However, if experimental results or

prototype is ready, it is good idea to file complete

application to save cost of drafting provisional

application. Often patent attorney will take longer time

to draft complete application and therefore, if date of

filing is critical, one may opt for provisional application.

Patents are a great source of technical

information and it makes lots of sense to

check them to assess state of art before

filing for a patent.

Where to file?

It is worth noting that if inventor is resident of India, heshall either file application first in India and wait for 6

weeks before foreign filing or take permission from

Indian Patent Office for foreign filing. If one fails to do

so, he may be punishable with imprisonment for a term

which may extend to two years, or with fine, or with

both. For foreign filing of patent application, one may

select either filing PCT application or convention

application. However, countries where the patent

application shall be filed shall be selected very carefully

and one must file only in the countries where there is a

market. Filing without reason in undesired jurisdictions

results in wastage of money and time.

Commercialization option

Work out on commercialization options as soon as you

file application because technology is growing really

fast and losing upon the time may not fetch desired

attention in the market. You may either opt for

commercialising on your own or transfer your rights to

someone who has capacity to commercialise your

invention. You may transfer your rights by means of

license or assignment that shall be in writing and

executed in the form of a valid deed.

Is it safe to commercialise?

I am sure most of patent practitioners will agree that it

is really tough to convince and communicate to

the inventors that after filing for a patent, when they

actually plan to launch the product in market, it is

necessary to check if they are not infringing third party

(ies) intellectual property rights. Clearance search, also

called as freedom-to-operate search is extremely

necessary to minimise risk of infringement of third party

(ies) patent rights upon product launch.

Disclaimer: The points listed above are generic and

provides only an overview but there are several factors that

govern worth and market success of the invention and it

shall be worked out on case by case basis.

IP NEWS BULLETIN

Indias first product Patent revoked

Intellectual Property Appellate Board (IPAB) has

revoked a patent granted in India to Roche for Pegasys, a

medicine used to treat Hepatitis C for the reason that

there was no evidence that the drug is superior to

existing treatments. The order followed an appeal filed

by a Mumbai-based non-profit organisation, Sankalp

Rehabilitation Trust, challenging the rejection of its post-

grant opposition by the Indian Patent Office (IPO). The

Trust provides treatment to and rehabilitation support,

for injecting drug users (IDUs).

The appeal was against a decision delivered by IPO in

March 2009, which rejected the Trust's post-grant

opposition against the grant of patent for Pegasys (Peg-

Interferon a2a). The appeal is allowed through the IPAB

order now as IPAB deemed that there was no evidence

to suggest that the drug was any better than existing

treatments and also the fact that it was too highly priced

for the Indian public.

It is interesting to note that the said patent, granted to

Roche in 2006, was the first product patent on a

medicine in India under the new Trips-mandated

product patent regime for medicines. The patent granted

a monopoly to Roche to market pegylated interferonalfa2a. Patients with chronic Hepatitis C, who need a six-

month course of treatment of Roches product, have to

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NEWS FROM INDIAN PATENT OFFICE

Guidelines for patent applications related to

traditional knowledge and biological material in

India

Released on 8th November 2012, the guidelines for patent

applications related to traditional knowledge and

biological material in India can be viewed at:

http://ipindia.nic.in/iponew/TK_Guidelines_08Novembe

r2012.pdf

Amendment in Rule 110 of the Act, regarding

Indian Patent Agent examination

On 7th November 2012, Indian Patent Office, in exercise of

the powers conferred by Section 159 of the Patents Act

1970, the Central Government makes following rules to

amend Patent Rules 2003, namely:

1. These rules may be called the Patent (amendment)

Rules, 2012.

2. They shall come into force on the date of publication inofficial gazette.

3. In the Patent Rules, 2003, in rule 110:

(a) in sub-rule (2), against the paper relating to Viva voce,

for the figures "100", the figures "50" shall be substituted;

(b)for sub-rule (3), the following sub-rule shall be

substituted, namely:-

"(3) A candidate shall be required to secure a minimum offifty marks in paper I and Paper II and shall be declared to

have passed the examination only, if he obtains an

aggregate of sixty per cent of the total marks.".

A candidate shall be required to secure a minimum of fifty

marks in Paper I and Paper II and shall be declared to have

passed the examination only, if he obtains an aggregate of

sixty percent of the total marks.

Official notification may be viewed at following link:

http://ipindia.nic.in/iponew/patent_Amendment_Rules_

2012.pdf

purchase it at a cost of approximately Rs. 4,36,000

(available at a discounted price of Rs. 3,14,496). Again, it

has to be taken in combination with ribavarin, which alone

costs Rs. 47,160.

Swiss giants Roche are likely to appeal the decision to the

Supreme Court.

Apple ordered to pay $368 million to settle patent

dispute with VirnetX

Apple has been ordered to pay US$368.2 million in

damages for infringing four patents (U.S. Patent Nos.

6,502,135, 7,418,504, 7,921,211 and 7,490,151) used in its

FaceTime video calling service. The company was sued byVirnetX which had registered a number of video related

patents between 2002 and 2011.

VirnetX is a small Internet security software and

technology company, with patented technology for secure

communications including 4G LTE security. The

Companys patent portfolio includes 20 US and 26

international patents and over 100 pending applications,

out of which four U.S. Patent Nos. 6,502,135, 7,418,504,

7,921,211 and 7,490,151 patents relate to its FaceTime

video calling service.

Apple had argued that it was using different technologies

in its Facetime services. However, Apple tried to invalidate

Virnetx patents and denied any infringement.

The victory however strengthens VirnetX application to

the US International Trade Commission which is currentlyinvestigating if it should impose an import ban on Apple

products infringing the patents. Such a ban would affect

Apple's entire line of iPhone smartphones and iPad tablets.

VirnetX is a small company, having reported revenues of

just US$36,000 from patent royalties in the first half of this

year, according to analysis by Bloomberg News.

This is infact an excellent case to understand strength of

protection and enforcement of patent as a tool to obtain

competitive edge in market as well as use it for revenue

generation.

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PATENTALK: NITHYANANDA SHRINIDHI

On Intellectual Property (IP) Valuation

Nithyananda Shrinidhi is Assistant Professor in Finance and Law at Indian Institute of

Management, Tiruchirappalli. He holds a doctorate degree from National Law School of IndiaUniversity, Bangalore in the area of patenting financial innovations in India, which culminated

with the submission of the Doctoral thesis in the month of June 2011 and award of Doctorate

Degree in August 2011. His core area of interest is financial innovations, commercialization of IP

Rights, negotiating deals, structuring and broking deals and engineering financial transactions

including valuation.

Origiin: It is a pleasure having you for interview. Please enlighten us on what is meant by IP valuation

and why is it necessary?

Professor Nithyananda:As everybody knows, Intellectual Property is an asset. But unlike otherassets, IP asset does not enjoy a readymade market where buyers and sellers can meet to transact

with their assets. In order to reap the benefits of research & development activities, which helped

you create the IP assets in the first place, you need to commercialize it. Commercialization could

be in various forms, like outright sale of IP assets, leasing, collateralization, or securitization of IP

rights. This is where the inventor would actually make money from his IP assets.

In order to carry out such commercial activities, the counter party to such transactions has to pay money for your IP

assets. But he wouldnt know what price to pay for your IP assets due to the lack of a readymade market. In order to

facilitate a smooth and easy transaction during the commercialization process, valuation of your IP rights are carried

out. So IP valuation is a process of valuing your Intellectual Property Assets.

Origiin: At what stage valuation shall be done? Shall it be done at the stage of idea or when atleast

prototype is ready? Does it make sense to get valuation done in advance and after assessing value of

idea, proceed further with developing the idea?

Professor Nithyananda:Technically speaking, IP valuation would be carried out at the stage of commercializing the IPrights. But with the advent of modern finance, there have been instances where IP valuation is carried out even before

the money is invested towards R&D activities using methods like Real Options Analysis. This method uses probability

theory extensively and predicts the probable outcome of the R&D investment, thereby determining the value of the final

IP asset, all before investing a single rupee on the R&D. So, depending on the needs of the inventor / investor, IP

valuation could be performed at any stage between ideation and the final securing of an IP right.

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Origiin: Who is authorized to perform valuation in India? Can an IP attorney do it or we have

specialised people for the same?

Professor Nithyananda: Valuation is a highly technical field and involves a lot of mathematical and financial

calculations, in addition to a thorough understanding of the business environment and the product market in whichthe IP rights have been secured. It is a professional field, which is generally part of the high-end investment

banking activities (because generally they are the ones who would be dealing with IP assets regularly and they

have kind of ring-fenced this area of practice). As such, this field can be practiced by any person with this kind of

knowledge and expertise in the field of finance, including IP attorneys.

But statutorily the area of valuation and investment banking activities has been earmarked for accountants who

are statutorily recognized. In India, two kinds of accountants have been statutorily recognized, both by the Income

Tax and the Companies Act: the first is the Chartered Accountants (the members of the Indian Chartered

Accountants of India) and the Cost Accountants (the members of the Indian Cost and Works Accounts of India).

Once you have these professional qualifications, to augment your professional chances, they also become members

of autonomous valuers societies, which are available at various locations in country. Only such professional are

allowed to conduct valuation of IP assets and the certificates issued by them would be considered valid for

presentation to the Income Tax department or other statutory bodies.

Origiin: Does IP Valuation help entrepreneurs in any way on the process of getting funding?

Professor Nithyananda:Definitely IP assets do help entrepreneurs to get funding for their venture. Whenever anentrepreneur approaches a venture capitalist, filing for a patent or a granted patent would be considered very

positively by them, in deciding about funding the venture. They would consider it from two perspectives: the first is

the future market potential for the product and the second is the expected incremental revenue from the product if

it is protected under the IP regime. These factors would be considered for calculating the overall value of the

venture and also the quantum of funding they would invest in the venture. Thus indirectly, they would be using IP

valuation techniques while determining the incremental revenue from such IP assets, if they are available.

Origiin: How can IP valuation improve quality of innovation in any organization?

Professor Nithyananda: This is a very tricky question. Let me break it up into two components. As far as thecontribution of IP valuation in improving quality of innovation in an organization, it totally depends on the person

who is running such organization. If he is a shrewd business then he would ensure that he would leverage the

existing IP assets to generate the best possible revenue for his organization. In this process, IP valuation would

definitely help, by fixing the value at which the IP assets can be leveraged. Once he is able to generate more

revenue, then he can definitely reinvest into improving the quality of the innovation, either by spending towards

newer products / technologies, or by improving the existing technology to make it better.

But on the other hand, if he is not proactive, then he would just be investing in R&D activities, and once he secures

an IP asset, he would store it not leverage it. There are various ways to leverage IP rights, which have been

published in the form of an article by the Journal of IPR recently. Interested parties can go through it to understand

more about it.

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Origiin: Can a valuation report form part of organizations balance sheets as asset?

Professor Nithyananda:As far as the representation of IP assets on the Balance Sheet of the organization, thereagain would be a two pronged response that I would like to give. The representation of the IP assets on the

Balance sheet would depend on whether such asset was purchased or was self-generated within the organization.

But before I elaborate on this, some background on the process.

The items presented on the Balance Sheet are generally governed statutorily by the Companies Act of 1956 and

the guidance notes issued by the Institute of Chartered Accountants of India also popularly known as the Indian

Accounting Standards. The representation of Intangible Assets (which includes thereof intellectual property

rights in addition to items like goodwill, etc.), is governed by the Indian Accounting Standard 26, also popularly

known as AS-26.

This AS-26 treats the representation of IP assets generated internally distinctly from the IP asset acquired from

outside, either independently or as part of a general merger and acquisition process. If it is internally generated,

then the IP asset can be shown in the balance sheet only to the extent of the cost of creating such an asset. (The

cost would include cost of expenditure on materials and services used in the R&D activities, salaries and other

employment related costs of personnel involved in this process and any other expenditure directly attributable to

it like depreciation of equipment & furniture, rent for the lab building, etc., in addition to the cost of securing such

IP assets like the legal fees, patent office expenses, etc.)

On the other hand, if it is acquired from outside, then the entire cost of acquiring such IP assets becomes its value

which can be represented on the balance sheet of the company, including the purchase price, import duties and

other taxes, if any, and other directly attributable expenditure on making the asset ready for its intended use.

Having identified the value of the IP asset to be represented on the balance sheet, it cannot be presented in it

indefinitely. It has to be amortized over the life of the IP asset or over a reasonable period within which the

economic utility of such IP asset would depreciate completely. Hope I am able to make sense without using too

much of jargon.

Origiin: As you are passionate about teaching, it will be really nice if you can guide students on

route they shall take up to purse career in IP valuation area.

Professor Nithyananda:As responded to your question on who can carry out IP valuation activities in India, it iscurrently being reserved to two categories of professionals, the Chartered Accountants and the Cost Accountants.

In case students are interested in taking up a career in IP valuation, then they first need to clear the qualifying

examination of these courses, after which, they are expected to undergo a mandatory training under a qualified

professional for a prescribed period of time. It is only after this process that would become a qualified

professional in these respected professions. More information can be had from the respected website of the

profession that you wish to pursue.

Origiin: Professor Nithyananda, thank you very much for your time and valuable inputs.

Professor Nithyananda: You are welcome and it was a pleasure to be part of this forum.

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INTERESTING PATENT OF THE MONTH

Title of the invention: Santa Claus Detector

Inventor: Thomas Cane

Patent number: 5523741

Filing date: Aug 19, 1994Issue date: Jun 4, 1996

A children's Christmas Stocking device useful for visually

signalling the arrival of Santa Claus by illuminating an externally

visible light source having a power source located within said

device.

Christmas withMichael Faraday: The Chemical History of a Candle

There is not a law under which any part of this universe is governed which does not come into play and is

touched upon in these phenomena. There is no better, there is no more open door by which you can enter

into the study of natural philosophy than by considering the physical phenomena of a candle.

Michael Faraday, The Chemical History of a Candle

Michael Faraday, a renowned English scientist, had

contributed immensely in the area of

electromagnetism and electrochemistry. The

Chemical History of a Candle, was the title of a series

of six lectures on the chemistry and of flames given

by Michael Faraday at the Royal Institution in

London in 1826. This was the origin of the Christmas

lectures for young people that are still given there

every year and bear his name. The lecture beautifully

described the different zones of combustion in the

candle flame, and the presence of carbon particles in

the luminescent zone. The lectures were first printed

as a book in 1861. These lectures were very popular

and Faraday used to derive immense pleasure incommunicating the excitement of science to the

general public, especially children.

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http://en.wikipedia.org/wiki/Michael_Faradayhttp://en.wikipedia.org/wiki/Michael_Faradayhttp://en.wikipedia.org/wiki/Michael_Faraday


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Certificate Courses on Patent Specification drafting

Drafting a patent specification is a specialized skill wherein learning as to what is to be

claimed, identification and selection of novel elements and embodiments of an invention, best

mode of practicing an invention, in accordance with the enablement and best mode

requirements of patent laws, and also preparing drawings is extremely critical. Learning

specification drafting takes years of practice and the industry certainly has great demand for

skilled technical people for drafting specification especially in the present era of highlycompetitive and innovative environment.

We, at Origiin have designed a certificate course on patent specification drafting, specifically

for the candidates keen to pursue career in IPR as well as for the candidates preparing for

Indian Patent Agent Examination. This course has been aimed at teaching identification of

patentable subject matter from the invention, preparing drawings, drafting various sections

of patent specification with specific emphasis on claim drafting.

Eligibility: BE, BTech, BSc in any area of science/technology.

Unique features of the course are:

Class room sessions by industry experts Hands on exposure to specification drafting Project work Weekend classes

For further details, write [email protected]@gmail.com

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Documents

Origiin Newsletter December 2012 issue