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7/31/2019 Origiin Newsletter May-2012
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Origiin Newsletter May 2012, Volume 2, Issue 13
1
May 2012 Volume 2, Issue 13
IN THIS ISSUE
What is in a name? ..1
Latest News...3
Patentalk4
Interesting patent of the month..6
EDITORS
Santhoshi BasuthkarAnita Kalia
CONTACT US
Origiin IP Solutions LLP
#51, MSHS, 15th Main,
Sector 4, HSR layout
Bangalore
Mobile
+9198456 93459
+9198802 13204
Websites
www.origiin.comwww.origiinipa.com
Benjamin Franklin
Anyone who trades liberty
for security deserves neither
liberty nor security
What is in a name?Santhoshi Basuthkar ([email protected])
We all use the Internet day in and outin our everyday activities, ever wondered
what could be the possibilities of IP
infringement in this wide Internet space?
The foremost one is the Domain Name
infringement. Domain Name is the address of the webpage that one uses to navigate
on the Internet. It maps to a specific number such as Internet Protocol (IP) number
that serves as the routing address on the Internet. Further, the Domain Name System
(DNS) translates the Domain Name into IP number needed for transmission of
information across the network. The Domain Name is the part of Uniform Resource
Locator (URL) that directs the domain name server using the DNS to forward a
request for the webpage.
The Domain Name serves as a label that indicates the ownership and control of a
resource. It has a specific naming convention and is divided into hierarchies. The top
level indicates the geographic location or the purpose of its use, in example
tulip.com, .com is the top level. Most commonly used top level names are .net (for
network or internet related organisation), .edu (for educational institutions) and
.org (for non profit organisations). Other top level domains such as .in (for India)
and .uk (for United Kingdom) indicate the geographical location ofthe webpage. The
Domain Name infringement most often occurs in the second level name. The second
level names occur to the left of the top level domain such as, tulip in tulip.com. It
maps to the unique IP address and hence no two identical second level domains can
occur under the same top level domain name. However different domain names can
be linked to the same DNS, thereby sharing of the internet servers is possible. Over the
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years, Domain Name has become like a brand value or Trademark for a company/institution as its customers recognize
the company name over the Internet by means of the Domain Name mentioned in the website.
Registration of Domain Name can be done at any of the ICAAN accredited company. ICANN (Internet Corporation for
Assigned Names and Numbers) is a non-profit organisation that manages the Domain Name systems and allocation of
IP address space. The registration for a particular Domain Name is done on a first-come-first-served basis. Before
registering, the availability of a Domain Name can be checked using Whois, a protocol that is used to query largedatabases of Domain Names and IP addresses. Once registered, the Domain Name is valid for a year, after which it can
be renewed for about 10 years.
Domain Name disputes could occur due to several reasons, some of which are: when the original registrant
intentionally trades off the resemblance between the domain name and another famous trademark to cash on the
reputation of the trademark holder, or, when there are more than one legitimate users of a Domain Name with no
particular intention of trade off the other and have a valid reason to use a particular Domain Name, or, when certain
pirate companies which register famous trademarks as Domain Names with the only purpose of selling the Domain
Name to the corresponding trademark holder. In order to counteract such disputes ICAAN has framed the Uniform
Dispute Resolution Policy (UDRP) under which a trademark owner can initiate an administrative procedure to
challenge the existing domain name.
The classic case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme
Court of India on the issue of domain name protection. It dealt with two businesses employing variations on the same
mark ("Sify) in their respective domain names. Satyam Infoway Ltd alleged that Sifynet Solutions has intentionally
registered the domain name Sify that is confusingly similar to the one owned by it. It claimed that, in 1999 it had
registered several domain names such as sifynet.com, sifymail.com with ICAAN and WIPO for the purposes of its
business. It asserts that the word Sify which is an amalgam of its name Satyam Infoway has gained substantial
goodwill in the market. Meanwhile, in 2001, Sifynet Solutions started using the word Siffy as part of the domain
names such as siffynet.com and siffynetnet under which it carried on internet marketing. Thus Satyam Infoway alleged
Sifynet Solutions was attempting to pass off its services by using a deceptively similar word as part of its domain name
and thereby creating confusion in the minds of the customers. Sifynet Solutions placed its opposition stating that unlike
trademark, registration of a Domain Name did not confer an intellectual property right in the name and a Domain Name
is merely an address on a computer which allows the communication to the customers. Since there was no specific law
to clear the dispute of domain name, the High Court decided to apply the trademark to redress the dispute. The High
Court responded and held that domain names could be adequately protected under the doctrine of passing off referred
to in the Indian law of trade marks. This doctrine was then applied to resolve other domain name disputes such as
Yahoo Inc v Akash Arora, 1999, Rediff Communication Ltd. v. Cyberbooth & Anr, 2000, Titan Industries Ltd v Prashant
Kooapti etc.
Thus the registeration of a domain name has its importance similar to the registeration of a trademark. It aids in
recognition of an individual/community/company in the vast cyber space. There is also an edge when the company
brand name and the domain name are similar, it aids in adverstising the company on the Internet. However care needs
to be taken not to infringe any of the existing domain names.
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LATEST NEWS
Patents ON SALE!
The US internet firm AOL sold about 800 patents to Microsoft
and cashed in revenue of $1.06 billion. Shares rose to 4% on
hearing the results. The move comes as activist shareholder
Starboard Capital, which owns around 5.2% of AOL shares, is
mounting a proxy campaign to win seats on AOL's board. The firm has criticized AOL for not
doing enoughwith its intellectual property and for investing too much in online content that
isn't generating enough advertising revenue. AOL thus plans to handover the revenue that
was generated to its shareholders. AOL dint detail the patents sold, however some external
resources said that the patents include the Intellectual property on Netscape, although AOL
will retain the Web browsers brand name ad operating system.
Consequently, Microsoft has announced a deal to sell a block of patents obtained from AOL to Facebook for $550 million
in cash. Under the terms of the new deal, Facebook will take ownership of approximately 650 AOL patentsand patent
applications plus a license to reminder of the ex-AOL patent applications that Microsoft purchased. Upon closing of this
transaction with Facebook, Microsoft will retain ownership of approximately 275 AOL patents and applications; a
license to the approximately 650 AOL patents and applications that will now be owned by Facebook; and a license to
approximately 300 patents that AOL did not sell in its auction.
Trademark on a Pocket?
Vanity is a mall-based clothing chain; a denim retailer based in Fargo, is asking a federal
judge to settle a trademark infringement dispute it is currently in with Levi Strauss &
Company. Early his year, Levi Strauss sent a cease and desist letter to the Fargo-based
Vanity, claiming the pocket design on the retailer's jeans was "confusingly similar" to
Levi's brand of jeans. Vanity responded to the letter by filing for declaratory relief
against the Levi Straus stating that the "V" design on the back of its jeans is visually
distinctive from Levi's jeans and that Levi Strauss does not have the right to prevent
Vanity from using a stylized version of the letter 'V' in connection with its pocket
designs. It also claims that it has been using the "V" design in its trademark since the mid 1950's.
However, in the cease and desist letter to Vanity, trademark attorneys for Levi Strauss assert that the similarity in the
pocket designs "will create a substantial likelihood of customer confusion as to the source of Vanity jeans." As a result,
Vanity is seeking an order from a federal judge declaring that its pocket designs are not confusingly similar to the Levi's
brand. Additionally, Vanity is requesting that the judge issue an order precluding Levi Strauss from suing Vanity for
trademark infringement.
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PATENTALK: Dr. S.Ramamurthy
This section is an initiative by Origiin to introduce innovations from various inventors and
valuable expert opinions on protection, exploitation, of Intellectual property by Intellectual
Property experts to provide inspiration to the readers and also make our readers aware about
the emerging technologies, products and innovations. This section also aims at bringing out the
importance of patent protection and the way such innovations are make difference in evolution
of scientific progress in the country.
In this issue, we are introducing Dr. S. Ramamurthy, Scientific Advisor at Controller General of Patents, Trademarks and
Designs. He also heads the Knowledge Management, Centre for Emerging Technologies, Jain University Bangalore. He has
been the inventor of 5 patents so far. Below is his expert opinion on essential things about IP protection for a startup
company.
Designation and company name: 1. Scientific Advisor at Controller General of Patents, Trademarks and Designs. 2.
Professor & Head, Knowledge Management at Centre for Emerging Technologies, Jain University
Here is an excerpt of their interview byOrigiin
Origiin: 1. What are the IP protections that one needs to be aware of before starting a new company?
Dr. Ramamurthy: A new company before starting the business has certain plans or projects. The company may need to
outsource some of the work to other agencies for execution of the projects. For example, a new product has to be mass
produced, company has all the inputs such as drawings, business plans, securing and handling confidential information,
data security, know-how & method of manufacture but would like to outsource manufacturing to an external company.
In such a situation, the intellectual property of the company such as patents, copyrights, trademarks, business plans,
trade secrets and designs have to be protected before any discussion takes place with an outside agency. The IP
protection is taken by signing a Non-Disclosure Agreement (NDAs) or confidentiality agreement with the external
agency..
The details of the invention should be documented in a laboratory note book with dates and every important result
should be signed before a witness. The Invention Disclosure Form should be carefully filled before a patent attorney is
approached for filing a patent application. It may be worth signing a Non -Disclosure Agreement (NDA) with the patent
attorney before the invention is disclosed.
Patent only what is important. If patent office examiners or competing individuals or companies challenge your patent,
the legal fees can soar. You must conclude first that you need the protection, and second that you will recover much
more than your expenditure in additional long-term sales
Origiin: What are the prerequisites that need to be taken care of before filing a patent?
Dr. Ramamurthy: A patent is a form of industrial property which may be described as a monopoly right conferred by
the state to an inventor to industrially and commercially exploit his invention for disclosing the details of his invention.
The prerequisites that need to be taken care of before filing a patent are:
(1) Novelty
(2) Inventive step(3) Utility
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The first criterion for an invention to be patentable is that it must be new product or a new process. The invention
should not have been anticipated by publication in any document or used in the country or elsewhere in the world
before the date of filing of patent. Novelty means what is new and original, never seen or done before. The invention
should involve a technical advance as compared to the existing knowledge.
The second criteria for an invention to be patentable is that it should have an inventive step which makes the
invention non-obvious to a person skilled in the art In order to ascertain whether an invention meets the
requirements of an inventive step, a prior- art -search before submitting the complete specification should be
conducted to ensure that nobody else has protected the same/similar invention before. The third criteria for an
invention to be patentable are that it should be industrially useful.
Origiin: What are the IP forms that a startup needs to protect and why filing for a patent is on first prority?
Dr. Ramamurthy: For a start-up, patent, copyright, trademark, design and confidential information/trade-secret may
be the most critical forms of IP and each of them needs to be protected appropriately. Filing a patent application in the
Indian Patent Office is the first step towards securing a patent to your invention in India as it requires invention to be
novel on the day of fling. To file a patent application, a set of forms has to be submitted to the patent office. The forms
can be submitted online (https://www.ipindiaonline.gov.in/on_line/) if you have a class 3 digital certificate.
Alternatively, one can send true copies (hard copies) to the patent office. Indian patent offices are located at Delhi,
Kolkata, Mumbai and Chennai. The patent application has to be filed in the appropriate office based on your/yourcompanys location
Origiin: What are the long term benefits of filing a patent?
Dr. Ramamurthy: Filing for a patent is similar to planting a small plant today and reaps the benefits after several years.
If you do not protect the invention by a patent today, somebody else will seek the protection on the invention based on
your idea. After filing and getting granted after examination takes several years, but you can exploit the invention by
means of a license /assignment after application for a patent is filed. One may have various paten strategies, offensive
or defensive, governed by the business goals of the company.
Origiin: How to tackle the critical issues of disclosures in a patent?
Dr. Ramamurthy:The critical question in a patent disclosure is that how much of the invention has to be disclosed?
While the legal requirement for granting a patent is that the patent will be granted to whatever is disclosed, the
business aspect requires some know-how to be kept confidential. The claims should be drafted in a broader sense
while the actual process details or device details are kept confidential or trade secret by know-how
When the patent commercialization takes place, the know-how document will be given to the licensee after the
license fee is received and License agreement is signed, which includes Royalty clause also.
Origiin: What is your experience as an inventor and patent holder
Dr. Ramamurthy: Inventions do not happen suddenly but emerges as a spin off from scientific experimental research.Prior art search is the starting point, which motivates for new improved inventions. In inventions such as new air foil
bearings for high speed applications, most of the time and money is spent to build up experimental facilities and further
experimentation by varying parameters such as materials, cheaper methods of manufacture and other variations in
performance parameters. Patents were filed in India, US, Europe & Japan during emerging phase of research which
helps in getting industry partners and further licensing. The development took place in several stages like prototype,
pilot scale testing and actual field testing in machines for more than one year.
Final acceptance test is the result of several years of hard work of team of scientists. My passion for IP made me to
motivate other scientists to get 30 patents for the organization in four years.
Dr. S. Ramamurthy can be contacted at [email protected] or [email protected]
To post your story, write [email protected]
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INTERESTING PATENT OF THE MONTH
TV mute finger ring
United States Patent Application number : 10/38.828Inventor: William P.Murray JR., San RafaelPublication number: US 2003/0206393
Publication date: Nov 6, 2003Abstract: TV Mute Finger Ring with a hollow C shaped finger ring housing. The
housing contains the standard electronics and IR transmitting LED associated with
activating the mute function of a standard TV. The housing also contains a battery
type electrical power source. The C shaped ring housing has a loop type fastener
strip attached to one end of the C shape and a hook type fastening panel affixed to
the opposite end of the C shape so that said loop type fastener can removably attach
to said hook fastener thereby forming a full ring that can be worn on the user's
forefinger. The C shaped housing contains a momentary on-off switch and attached
outwardly accessible switch cover located in a position where the user's thumb can
easily reach said switch cover. The IR transmitter is covered by a transparent plastic
lens that is flush with the outer surface of said C shaped housing. The plastic lens ispositioned so that said lens and said IR transmitting LED are pointed outwardly in
the general direction of said TV
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