Prof. Tase and Vijay Tase’s
IPR Training Workshops
Science, Technology, TIFR, and IPR
02 November, 2007
• IPR in national and global context
• Types of IPR
• Process of IPR acquisition
• IP valuation and management
• Infringement
• Development of IPR personnel
Typical coverage of the IPR workshop for senior managers
IPR – the fundamental premisesIPR – the fundamental premises
• We all work hard and in good faith
• Most scientific development is ‘building on the past’
• Patents for ‘obvious’ inventions would stifle progress
• No patents means no incentive
• Must play the IPR game
1. IPR in National and Global Context
Broad context of IP
• Changing world• Not exactly a ‘friendly neighbourhood’• Need for the awareness of what’s yours• Creation of IP for survival and growth
In 1421, Filippo Brunelleschi received the world's first patent for an invention. He created a method of transporting marble more cheaply via a paddleboat.
We have a long way to go…
His patent gave him the right to burn any ship borrowing his design for three years.
The largest recipients of patent filings are the patent
offices of Japan, the United States of America (USA),
China, the ROK and the European Patent Office (EPO).
These five offices account for 77% of all patents filed in
2005, (a 2% increase over 2004), representing 74% of all
patents granted.
With an increase of almost 33% over 2004, the patent
office of China became the third recipient of patent filings
in 2005.
IPR in international news
WIPO Report Reveals Changing Geography of Innovation with Highest Patenting Growth Rates in North East AsiaWIPO, 20 August, 2007
The MD Speak
Mahindra Innovation at low cost:
Scorpio: $30M – engg design, $50 Production specific expenses, $40 facilities
Integrated Production Management System:
$140k v. $2.6m import
Bolero: Seat installation system: $30k Italian, $1500 inhouse.
So, where’s the IP?
The CEO Speak
DNN Money, 27 Aug., 2007
Infringement
IPR and M/A JVs in the News
Tata Motors: “The management will expect a return from the R&D just like any other investment. They will get more aggressive about guarding the output of their research”
“As foreign companies set up their own operations, the local firms are having to spend their own money on R&D”
TVS: 12 crores to50 crores in 7 years
Bajaj: From under 3Cr to 68 crores within a decade
Tata Motors: This is just a start. As more Indian companies build their own products, the litigation will only be on the rise.
STATE OF PATENTING IN INDIASTATE OF PATENTING IN INDIA
1992 2500 applications in India
1600 900 Foreign Indian Nationals Nationals
Applications in Japan
130,000
STATE OF PATENTING IN INDIASTATE OF PATENTING IN INDIA
2003 12000 applications in India
10,000 2,000 Foreign Indian Nationals Nationals
Applications in Japan
450,000
IPR in Worldwide Research Organisations
National Science Foundation, USA – Policy On Patents
CERN, Europe – Policy On Technology Transfer
OECD – Turning Science Into Business – Patenting And Licensing At Public Research Organisations
Oxford University – Intellectual Property Policy
Cornell University – Patent Policy
IPR in Worldwide Research Organisations
NASA – 641 (1941)
Oxford University – 21 (191)
TIFR – 3 (20)
CERN – 8 (74)
Cornell University – 52 (258)
MIT – 3020 (8572)
IIT – 82 (267)
Mahindra and Mahindra – 1 (25)
L&T – 1 (56)
COMPANY NO. OF PATENTSToyota - 99,999+
GM - 11,000
Honda - 97,000+
Renault - 23,000+
Daimler Benz - 7,000+
Land Rover - 2,100+
Volkswagen AG - 16,000+
Porsche AG - 12,000+
General Electric/GE - 25,553
SONY - 20,873
Ford/Ford Global - 8,888
IBM - 99,999+
European Patent office database, Sept. 2007
- What do all these numbers mean?- Are they ‘technically’ sound?- Are they of strategic importance?- Do many/most make money?
- Creates an image- Commands respect at the bargaining table- Reflects a culture at the ground level- It’s a hallmark of global powerhouses
Need for IPR
Essential Panchasheel
Innovation
Creativity
Entrepreneurship
IPR
InventionSuccess
Goregaon Pattern
Ulhasnagar Pattern
What IP can do for you
• Wealth creation• Legitimate ownership• Monopoly – market advantage• Entry into the big league• Bargaining power• Talent attraction• Collaborations• Image of a trustworthy organisation• Stay in business and keep others out!
No!!!
IPR – is it a panacea?
Vigilence required
IPR or not - people will steal
You may not always win (even if you are in the right)
IPR costs a lot of money
Why bother then?
Why bother then?
IPRs are necessary no matter which side of the wall you are on!!
Protect your own ideas
Let others know your boundaries
Modify others’ ideas legitimately
Don’t become a trespasser
Need for IPR for nations as a whole
Japanese Industrial Development and IPR
From about 1600 for about 250 years the door was closed to the outside world
In 1854, when Japan reopened the doors, the science and technology of the West, had surpassed Japan.
Japan did not have the power to compete against the advanced Western countries.
Japanese Industrial Development and IPR
As the early stage of industrialization, it was necessary to import leading technology from abroad.
Japan had to import technology from abroad, for which it was vital to establish an IPR system.
1884, the Trademark Ordinance; 1885 the Patent Ordinance.
However, there was the problem that patent rights of foreigners were not recognized.
Sakichi Toyoda – Founder, Toyoya
In his lifetime, Toyoda himself acquired 84 patents and 35 utility models.
Total No. of patents 99,999+
Japanese Industrial Development and IPR
Soichiro Honda, Founder the Honda Group.
Honda himself acquired 115 patents and 359 utility models.
Japanese Industrial Development and IPR
Total No. of patents 97,000+
Sony, Masaru Ibuka, Co-Founder Sony.
Ibuka himself acquired 50 patents and 53 utility models.
Japanese Industrial Development and IPR
Total No. of patents 20,000+ worldwide
A large number of venture industrialists in Japan used the patent system and, along with developing the companies they established, also caused the Japanese economy to develop.
IPR to Economic Development
Takahiko KONDO Commissioner Japanese Patent Office November 16, 1999 Tokyo
Infringement
www.peertechnical.netMechanicalP.Lawsuit
Haworth <-- Steelcase
1996$211,000,000
ElectronicsP.SettlementIntergraph <-- Intel2002$300,000,000
MedicalP.LawsuitCordis/Johnson &
Johnson <-- Boston Scientific
2000($324,000,000)
SoftwareP.SettlementPitney Bowes <-- HP2001$400,000,000
ElectronicsP.SettlementLitton Industries <--
Honeywell2001$420,000,000
SoftwareP.BuyoutInterTrust <-- Sony,
Philips2002$453,000,000
MechanicalP.BuyoutSpinBrush Inc. <-- Procter & Gamble
2002$475,000,000
ElectronicsP.SettlementTexas Instruments
<-- Toshiba1990$500,000,000+
ComputerP.LawsuitDigital <-- Intel1997$700,000,000
ChemicalP.LawsuitPolaroid <-- Eastman
Kodak1991$873,000,000
SportsC.LicenseMajor League
Baseball <-- Fox Television
2002$2,500,000,000
TechnologyLegal ActionPartiesYearAmount
Xerox Corp v. University of Texas. Feb 2002
HP v. Cornell University, 2001
MIT (Boston)/Electronics for Imaging v. A lot of
companies - 2002
Institutions in IPR lawsuits
Steal this idea: university patent-infringement suits flourish - UpdateUniversity Business, March, 2002 by Tim Goral
Valid Steal
Direct Infringement
Contributory or induced Infringement Vicarious Infringement
Types of InfringementTypes of Infringement
Direct
Contributory
Vicarious
It is wholesale reproduction and distribution of ‘protected’ works
It occurs when someone knowingly encourages infringing activityWhen for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts
Ignorance no excuse!
Infringement – a tricky situationInfringement – a tricky situation
• Many of us work hard and in good faith
• Most scientific development is ‘building on the past’
• Patent monopoly would stifle the development
• No patents means no incentive
• Must play the IPR game
How to deal with infringement?
How to deal with infringement?
Offender Defender
Identify Your Position
What should you do with the infringer?
It’s all about money, not emotions
Don’t be intent on destroying the infringer
What should you expect out of an infringement suit?
Must work out a solution
How to deal with an offender?How to deal with an offender?
• Take action at the earliest• Do your homework• Assess whether you are in the right• Make sure notice has been served• Offer a way out without compromising your
business• Study the history of your own firm as well as that
of the offender• Court of law• Deal objectively, not emotionally
IP Generation and valuationIP Generation and valuation
Resources for Successful IP Generation
• ‘Breaking out’ mindset
• Tools for inventive creativity
• Interrogator
• Writing abilities
Management’s encouragement (moral and financial)
What is the value of an IP?
Single IP may or may not carry much/any value, a carefully constructed portfolio will normally carry high value
Value?
IP competitive strategies
B
M&M
M&M M&M
M&M
M&M
M&M M&M
M&M
M&M
M&M
Design Around
M&M
M&M
M&M M&M
M&M
M&M
M&M M&M
M&M
M&M
M&M
Build A Fortress
Wiggle your way out
Live and let live
Forming Strategic Alliances
The cross-licensing signaling a new trend, allows the electronics giants to tap each other's vast patent portfolios of basic technologies.
Sony, Samsung to share patents