TiEcon Delhi-2013Innovation In Action

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INNOVATION NATION

Taj Palace Hotel, New DelhiOctober 5, 2013

Dr. Deepa Kachroo TikuPartner

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Scope

What is IP

Paradigm shift

IP - the intangible asset and value driver

Our focus – patents

Why patent your technology

What is Intellectual Property (IPR)

• Pertaining to the intellect or understanding; something which appeals to, engages or requires exercise of intellect

• Intellectual property – a business asset - like real estate: must be defined, value assigned, used

• IPR: developed, protected, maintained, upgraded, used to realize value

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Paradigm shift

• Agrarian economy to Knowledge-based economy

• Hard assets vs. soft intangible assets

• Recent Survey by US Dept. of Commerce in 2012 showed that IP-intensive industries accounted for about $5.06 trillion in value added, or 34.8 percent of U.S. GDP, in 2010

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0%10%20%30%40%50%60%70%80%90%

100%

1982 2000

38

70

62

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Physical assets Intangible assets

Source: US IP report prepared by the US Department of Commerce, 2012

Sakichi Toyoda’s weaving machine - 1929

What does this have to do with what is now a world class Japanese

Company!!

IP power – the value driver

• 1929 Granted Patents on Automatic Weaving Machine

• Earned huge royalties post 1929

• Invested in R/D on Automobiles

• Founded “TOYOTA Motor Company

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Forms Of IP

IPR

Trademarks or Brands

Copyright

Trade Secrets

Patents

Designs Plant Varieties

GI

Place holder for future forms

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Semiconductor/IC

Some Common Misconceptions

• Some statements culled out from print media

– “the Company has patented its brand”– “they have a copyright on this trademark”– “this design is our patent”

Each of these statements reveals confusion about IP rights

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IP Rights Distinguished

Brand??

Shape ?

Useful cap ?

Creative layout ?

Any IP ?

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IP Rights Distinguished

Trademark ?

Design

Patent

Copyright

Any IP ?

And a Product may incorporate several forms of IP!

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Our Focus : Patents

“Let’s patent this”

- Patents are granted for an article, device, system, process or composition of matter

- Criteria : novelty, inventive step and industrial applicability

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Important International Agreements pertaining to Patents

PARIS CONVENTION

WTO/TRIPS AGREEMENT

PATENT COOPERATION TREATY

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The Patents Act, 1970 The Trade Marks, 1999 The Copyrights Act, 1957 The Designs Act, 2000 The Protection of Plant Varieties and Farmers Rights Act,

2001 The Semiconductor Integrated Circuits Layout The Geographical Indications of goods (Registration and protection) Act, 1999

IPR legislations in India

The Biological Diversity Act, 2002The Information Technology Act, 2000

Supporting legislations

•Utility model protection – under consideration•India all set to become an International Searching and Examining Authority under PCT for Patents

WTO-TRIPs COMPLIANT

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Indian courts and IP offices

• Four Patent Offices• Five Trademark Offices• Separate Copyright Registry• Intellectual Property

Appellate Board (IPAB)• Supreme Court at New Delhi• High Court in every State• District Courts

IP Offices come under the purview of Ministry of Commerce and Industry

• A Patent is a right granted for an invention -to an inventor-by the government

in exchange for full disclosure of the invention – quid pro quo approach

• Patents are territorial rights• Patents can be sold or licensed to generate

revenue – immense commercial value

What is a patent

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•Making•Using •Offering for sale •Selling•Importing (the patented product)

Patents are negative rights

A patent gives the owner an exclusive right to prevent others from

STOP

•Using (the patented process) OR•Using•Offering for sale •Selling•Importing (the product obtained directly from the patented process)

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What is not claimed is not protected

So what is a CLAIM?

•Claims define the scope of protection•Claims must be supported by the description•Fence or boundary•Single sentence •Broad /narrow claims•Independent claim, dependent claims

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Claims are tools of defense and offence

Claim wording is important

1. A composition comprising a solid, a liquid, and a gas. (independent claim)

2. The composition of claim 1, wherein the solid is a salt. (dependent claim)

3. The composition of claim 2, wherein the salt is sodium chloride.

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Non-patentable subject matter

All fields of technology are patentable Certain exclusions in Section 3 and 4: What are not inventions

Section 3(b) - contrary to public order and morality Section 3(c) – discovery of naturally occurring things Section 3(d) – new forms of a known substance Section 3(e) – composition mere admixture‐ Section 3(f) – mere arrangement or rearrangement or duplication of

known components/devices Section 3(i) – method of treatment of animals and humans Section 3(j) – plants, animals and parts thereof and essentially

biological Processes Section 3(k) – computer programs per se

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• In 2012, Microsoft made headlines by buying 925 patents worth $1.1 billion from AOL in an all-cash deal

• Facebook bought 650 patents of these from Microsoft for $550 million

The patent deal offered obvious benefits to all involved:

• AOL walked away with sorely needed cash for patents it was no longer using.

• Microsoft got to take home some of the first social networking patents ever granted.

• And Facebook was insulated from the legal attacks those patents could have aided, had they ended up in the hands of a rival like Google.

SAMPLE THIS…

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To sum up…

•A Patent can be obtained for a new and inventive product or a process, mere ideas cannot be patented.

•The Patent Office receives patent applications, examines them under the given law and grants patents

•It is important to have strong patents otherwise, they can be challenged later

•The decisions of Patent Office can be challenged before the Intellectual Property Appellate Board (IPAB) and IPAB decisions before the High Court/Supreme Court

•A patent remains valid for 20 years provided renewal fees is paid regularly.

•After the patent expires, the public is free to use it without the patentee’s permission

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Thank you

Email: deepa@knspartners.com