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Institute of Intellectual Property Institute of Intellectual Property Research & DevelopmentResearch & Development

Presentation onPresentation on

Intellectual Property as a Low Intellectual Property as a Low Investment Growth MantraInvestment Growth Mantra

Vinod Khurana, Director, IIPRDVinod Khurana, Director, IIPRD

19’th June’0819’th June’08

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AgendaAgenda Introduction to Intellectual PropertyIntroduction to Intellectual Property

Scope of Software Patents in Indian Patent SystemScope of Software Patents in Indian Patent System

Scope of growth for Corporates through IPScope of growth for Corporates through IP

Background of the Institute & In-house Law FirmBackground of the Institute & In-house Law Firm

Services Offered by the Institute along with Law FirmServices Offered by the Institute along with Law Firm

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Introduction to Intellectual Introduction to Intellectual PropertyProperty Intellectual Property Rights (IPR) is a collection of Intellectual Property Rights (IPR) is a collection of

rights that are granted for any mental work or creation rights that are granted for any mental work or creation that involves intellectual inputs. that involves intellectual inputs.

These rights are granted for stipulated period of time These rights are granted for stipulated period of time giving the owner monopoly in the technologygiving the owner monopoly in the technology

Intellectual Property Profile, specially in India, has Intellectual Property Profile, specially in India, has undergone sweeping changes in the past. Intellectual undergone sweeping changes in the past. Intellectual Property has now become a core area for the growth of Property has now become a core area for the growth of any corporate. any corporate.

With the growth in International trade and globalization With the growth in International trade and globalization of economic activities, the scope and definition of of economic activities, the scope and definition of Intellectual Property is expanding internationally.Intellectual Property is expanding internationally.

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Indian Patent Act, 1970Indian Patent Act, 1970Some Post 2005 DefinitionsSome Post 2005 Definitions

Sec. 2(j) InventionSec. 2(j) Invention• Any new product or processAny new product or process• Involves an Inventive StepInvolves an Inventive Step• Capable of Industrial ApplicationCapable of Industrial Application

Sec. 2(ja) Inventive Step-Feature involvingSec. 2(ja) Inventive Step-Feature involving• Technical advancement; orTechnical advancement; or• Economic significance; orEconomic significance; or• Combination of aboveCombination of above

and makes it non obvious to a person skilled in the and makes it non obvious to a person skilled in the artart

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Software Patents in IndiaSoftware Patents in India Section 3(k): An invention pertaining to a mathematical Section 3(k): An invention pertaining to a mathematical

or business model or a computer programme per se is or business model or a computer programme per se is not patentable. not patentable.

What makes a software invention patentable in IndiaWhat makes a software invention patentable in India Inventions showing technical effectInventions showing technical effect Giving a tangible resultGiving a tangible result Incorporating and/or impacting hardware elementsIncorporating and/or impacting hardware elements Should have a specific limitationShould have a specific limitation Improving properties of hardware elements (increasing Improving properties of hardware elements (increasing

processor speed, decreasing processing time, lower processor speed, decreasing processing time, lower memory utilization)memory utilization)

Examples of what applications are protectable: Examples of what applications are protectable: Embedded SystemsEmbedded Systems Firmware based applicationFirmware based application Applications impacting hardware element (s) in a technical Applications impacting hardware element (s) in a technical

mannermanner

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Scope of Copyrights in Software Scope of Copyrights in Software DomainDomain Copyrights are given only for particular expression of Copyrights are given only for particular expression of

an idea and not the idea itself. an idea and not the idea itself. Copyrights can prevent copying of the code having a Copyrights can prevent copying of the code having a

set of instructions.set of instructions. Software copyright can protect:Software copyright can protect:

Set of instructionsSet of instructions Tables, Compilations including computer databasesTables, Compilations including computer databases

by simply recording the program on a tangible medium by simply recording the program on a tangible medium such as ROM, Magnetic tape, Diskettesuch as ROM, Magnetic tape, Diskette

Requirements for Registration of Copyright officeRequirements for Registration of Copyright office Application on Form IVApplication on Form IV Portions of the software (Specially the first and last few Portions of the software (Specially the first and last few

pages)pages) Sum of Rs. 10 per work of protectionSum of Rs. 10 per work of protection

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Copyright vs. PatentsCopyright vs. Patents

Disadvantages of a protecting Software as a CopyrightDisadvantages of a protecting Software as a Copyright Prevents only direct copying not different embodiments Prevents only direct copying not different embodiments

of carrying out the same methods and systems. of carrying out the same methods and systems. Independent recreation of the set of instruction does not Independent recreation of the set of instruction does not

constitute infringement. constitute infringement. Patents are much more effective in preventing Patents are much more effective in preventing

infringement and gaining monopoly for the software infringement and gaining monopoly for the software system and/or method.system and/or method.

Disadvantages of protecting Software as PatentDisadvantages of protecting Software as Patent Higher costs involved and long prosecution timeHigher costs involved and long prosecution time May get tough to attain in some designated countriesMay get tough to attain in some designated countries

In spite of higher costs involved, it is highly recommended In spite of higher costs involved, it is highly recommended to get the software patented to ensure that all to get the software patented to ensure that all implementation and embodiments of the invention is implementation and embodiments of the invention is secured from infringement.secured from infringement.

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Legal Focus AreasLegal Focus Areas Patents Patents

Patent Application PreparationPatent Application Preparation Worldwide Patent Filing, registration, and renewalWorldwide Patent Filing, registration, and renewal Patent ProsecutionPatent Prosecution Search-Mapping (Patentability Searches, Search-Mapping (Patentability Searches,

Infringement Analysis, Invalidation, FTO)Infringement Analysis, Invalidation, FTO) Patent Strategy Development Patent Strategy Development LandscapingLandscaping Patent Portfolio ManagementPatent Portfolio Management Patent Valuation, Licensing, and Patent Valuation, Licensing, and

Commercialization Commercialization IP Audit and Due-DiligenceIP Audit and Due-Diligence Litigation SupportLitigation Support IP Cell Creation And Intellectual Property Manual IP Cell Creation And Intellectual Property Manual

DevelopmentDevelopment

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IIPRD AlliancesIIPRD AlliancesInternational AlliancesInternational Alliances European Patent OfficeEuropean Patent Office D Young & Co.D Young & Co. Fulbright & Jaworski LLPFulbright & Jaworski LLP CRA International, Inc.CRA International, Inc. Ladas & Parry Ladas & Parry Sughrue Mion, PLLCSughrue Mion, PLLC Henkel, Feiler & Hanzel..among othersHenkel, Feiler & Hanzel..among others

Indian AlliancesIndian Alliances Technology Information Forecasting & Assessment Technology Information Forecasting & Assessment

CouncilCouncil Council of Scientific & Industrial ResearchCouncil of Scientific & Industrial Research

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Key DifferentiatorsKey Differentiators End-to-End IP ServicesEnd-to-End IP Services

High Level of Client OrientationHigh Level of Client Orientation

High Level of Technical and Legal Expertise of the High Level of Technical and Legal Expertise of the Team (Team Selected from Premier Colleges in India)Team (Team Selected from Premier Colleges in India)

Team of Patent Attorneys/Agents having strong Team of Patent Attorneys/Agents having strong credentials and expertise in Pharmaceutical, Chemical, credentials and expertise in Pharmaceutical, Chemical, Biotechnology, Software, Electronics & Biotechnology, Software, Electronics & Telecommunications, and Mechanical domainsTelecommunications, and Mechanical domains

Highly qualified team of CA’s for conducting IP Highly qualified team of CA’s for conducting IP Valuation and IP Audit ExercisesValuation and IP Audit Exercises

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Executive DirectorExecutive Director

Mr. Vinod KhuranaMr. Vinod Khurana Vinod Khurana has been in the field of Business Legal Finance Vinod Khurana has been in the field of Business Legal Finance

for the last 35 years. Khurana started his practice in for the last 35 years. Khurana started his practice in Intellectual Property, with focus on Protection and Intellectual Property, with focus on Protection and Commercialization of Intellectual Property in late nineties. He Commercialization of Intellectual Property in late nineties. He has been researching and educating on fighting thefts and has been researching and educating on fighting thefts and frauds of intellectual Properties and white-collar crimes, by frauds of intellectual Properties and white-collar crimes, by practicing a mix of Law, Intellectual Property, Accounting, practicing a mix of Law, Intellectual Property, Accounting, Ethics and Criminology coupled with his professional Ethics and Criminology coupled with his professional qualification being a B.Com, PGDFA, LLB, MBA, AICWA, CFA qualification being a B.Com, PGDFA, LLB, MBA, AICWA, CFA among other specialization qualifications in Investigation and among other specialization qualifications in Investigation and Commercialization of Intellectual Property. Commercialization of Intellectual Property.

Vinod Khurana is also the Executive Director of the Institute of Vinod Khurana is also the Executive Director of the Institute of Intellectual Property Research & Development. Mr. Khurana Intellectual Property Research & Development. Mr. Khurana has been speaking on IP Valuation, Due Diligence and Theft has been speaking on IP Valuation, Due Diligence and Theft of Intellectual Property at various Industrial Forums, National of Intellectual Property at various Industrial Forums, National and International Seminars. Khurana has also undertaken and International Seminars. Khurana has also undertaken various dedicated Workshops and Seminars for well various dedicated Workshops and Seminars for well established corporates such as Wockhardt, Indian Oil established corporates such as Wockhardt, Indian Oil Corporation, ITC, TVS Group, CSIR, among many others. Corporation, ITC, TVS Group, CSIR, among many others. Department of Economic Affair, Ministry of Finance, Department of Economic Affair, Ministry of Finance, Government of India has also empanelled him for Government of India has also empanelled him for appointment as Special Director on the Board of Sick appointment as Special Director on the Board of Sick Industrial Companies.Industrial Companies.