Intellectual Property RightsAn Introduction

Anoop Kurup

Co-Founder & Director

1. Types of Intellectual Property

Contents

2. Patents

3. Q & A’s

4. Case Studies

5. How to Document your Invention5. How to Document your Invention

6. How to do a quick IP Assessment

7. Do’s and Don’ts

TYPES OF INTELLECTUAL

Introduction to IP

TYPES OF INTELLECTUAL PROPERTY

Copyright

Trademark

™ vs ®™ vs ®

Public Disclosure

Limited Monopoly

PatentsA patent is an intellectual property right that is granted by a government

applies within the territories and Disclosure Monopoly

20 Years

Territorial Right

Exclude Others

Best Mode

applies within the territories and possessions of the government

expires twenty years from the filing date

A patent gives its owner the right to exclude others from making, using, offering to sell, or selling the invention covered by the patent or from importing the invention covered by the patent

Others

A patent does not give the owner the affirmative right to practice the invention claimed in the patent

Process or Method

What Can Be Patented

Process or Method

Machine or Apparatus

Article of Manufacture

Composition of Matter

Chemical Compounds

Novel

Non- Obvious

Utility

Chemical Compounds

Physical Mixtures

Improvements of Any of the Above

Patents

Utility Patents

Improvement or new invention in any technology area including genetically modified organisms. Has a life of 20

Industrial Design

Utility Patents including genetically modified organisms. Has a life of 20 years from the date of filing

Ornamental aspects of invention. Life of 14 years from grant in US.

Plant Breeders Rights

New varieties of plants made by combining two or more different types of plants.

Patent Claims

The “Claims” of a The “Claims” of a patent define the scope of the invention. The claim language defines the “edge” of the “edge” of the property right.

The requirement

Prior art limits the scope of patent claims

The requirement for novelty means that a patent claim cannot include what is already in the already in the prior art.

Types of IPR : Summary

Industrial DesignPatents

Semiconductor Chipset Design

Trade Secret Plant Breeders Rights

Industrial Design

Trademark

Patents

Chipset Design

Geographic Indications

Copyright

Trademark

QUESTIONS AND ANSWER

Your turn

QUESTIONS AND ANSWER

CASE STUDIES

How companies leverage IPR

CASE STUDIES

Case Study

Gillette Mach 3 is protected by a strong portfolio of more than 35 patents (including patents on the manufacturing process), which deters competitors from entering the “triple blade razor market”.the “triple blade razor market”.

“FIT Biotech Plc acquired assets of Xenerate Ab and starts the

Case Study

“FIT Biotech Plc acquired assets of Xenerate Ab and starts the development of novel gene technology based vascular devices

FIT Biotech Plc announced today that it starts a development of new biocompatible cardiovascular devices, applying its proprietary Gene Transport Unit (GTU®) technology. FIT Biotech acquired the intellectual property rights and other assets of Xenerate AB, a company combining medical devices and gene therapy. Together, FIT Biotech's knowledge in DNA plasmids and gene therapy, and Xenerate's background in cardiovascular device technology, will create a unique platform for the development of medical devices for the treatment of cardiovascular development of medical devices for the treatment of cardiovascular diseases.”

Source: http://www.fitbiotech.com/en_012303_1.html

Case Study

“Exelixis Acquired Key Plant Technology, Intellectual Property And Plant Biology Capabilities Through Acquisition of Agritope

The acquisition of Agritope provides Exelixis with key intellectual property, substantial additional technology including expertise in additional model systems, and extensive experience in plant biology. Combined with Exelixis' existing expertise in bioinformatics, genomics, and complementary plant model systems, this program gives Exelixisand complementary plant model systems, this program gives Exelixisa superior plant genomics program.”

Source: http://ir.exelixis.com/phoenix.zhtml?c=120923&p=irol-newsArticle&ID=779040&highlight=

Case Studies

Israeli based NASDAQ listed company in VOIP domain wanted to raise

IP on Low power semiconductor with focus on reducing power

Transmeta VocalTech Communications

in VOIP domain wanted to raise money from the market. Holds 22 patents.

focus on reducing power consumption on electronic devices(140+ patents)

Got Acquired by Novafora for $255.6 million

Irvine SensorsTelcorida

11 patents were sold for $12.5 Karo Millennium JP LLC, shares jumped 11 percent on NASDAQ after this transaction

A telecommunication R&D firm with 800+ patents

A California based company engaged in creating products in the electro-optical cameras, image processors, and stacked chip assemblies

Irvine Sensors

IP licensing to Aprolase Development Co.for $9.5 million

Telcorida

Got funding from an Invention and private equity investor firm for a "long term commitment”, the new investor will license 500 of their inventions worldwide

DOCUMENTING INVENTION

The beginning of good IPR

DOCUMENTING INVENTION

Documenting Inventions

Keep a notebook!Keep a notebook!

Keep the pages sequential and clearly dated.

Documenting Inventions

Write down your experiments! (especially the Write down your experiments! (especially the ones showing structure of the invention and how to make the invention) = “reduction to practice”

Also write down significant ideas! (ditto!) = “conception”“conception”

Documenting Inventions

Periodically show your notebook to someone Periodically show your notebook to someone else in the lab who is not an inventor (but who has an obligation of confidentiality and can understand what you are telling them).

Have that witness sign and date the pages and indicate that they have “read and indicate that they have “read and understood "the content.

PATENT SEARCHES

Conduct a quick due diligence for patentability

PATENT SEARCHES

A Few Patent Search Resources

Google PatentsGoogle Patents

USPTO

WIPO

EspacenetEspacenet

Free Patents Online

DO’S AND DON’TS

Precautions to be taken

DO’S AND DON’TS

Do’s and Don’ts

1. Public Disclosure without NDA1. Public Disclosure without NDA2. Non Dated Documents for invention disclosure3. Communicating to third party4. Communication protocols

• Comparing with others’ invention• Stating opinions about prior art• Using words like “infringe” or “copied”• Using words like “infringe” or “copied”

Thank you

Anoop.kurup@inolyst.com