Intellectual Property Rights …. A General...

pganguli©2000-2008

Professor Prabuddha Ganguli

CEO “VISION-IPR”

201 Sunview Heights 262 Sher-e-Punjab, Andheri East

Mumbai 400 093 [email protected]

Intellectual Property Rights

…. A General Introduction

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Key issue : Ownership of

Knowledge

versus

IPR plays a decisive role

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Consumption Daily 6/29/2004

Beijing – 50,000 Counterfeit LV Bags Destroyed

The local Technical Supervision Bureau (TSB) in Beijing

destroyed 50,000 Louis Vuitton bags, worth

RMB5 million. LV’s agent in China witnessed the destruction

of the seized bags.

China Intellectual Property News 7/3/2004

Guangdong – Biggest Trademark Infringing Case

Guangdong AIC recently released information on a trademark

infringing case with an estimated total value of RMB11 million. The infringing products seized were mainly sportswear labeled

“NIKE,” “Adidas,” and other brands. Some of the infringing

shoes included “NIKE” designs that are scheduled to be

launched in 2005.

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Yves Saint Laurent vs. Ralph Lauren

In 1970, the French designer Yves Saint Laurent (YSL) created and successfully marketed a long black sleeveless tuxedo-like evening dress, which the YSL fashion house reintroduced in their 1992 collection.

Ralph Lauren was selling a similar version of the dress in their 1992 collection.

YSL brought suit against Ralph Lauren under copyright infringement, design infringement and unfair competition. May 1994:

The court in Paris decided in favor of YSL

Court concluded that YSL owned the 1970 dress design under the law on Designs and Models and also considered the dress design an original copyrighted creation.

YSL was awarded damages of FFr 2 million. [50% for copyright infringement and 50% for damages resulting from unfair competition.

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Private Public

Producer Consumer Industrialized Economies Developing Economies

Balancing of Interests

“Private Interest Must Yield Public Good”

Monopoly Competition

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Controlling Counterfeiting

…….A never ending challenge

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This image cannot currently be displayed.

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COPYRIGHT

LAYOUT DESIGNS FOR

INTEGRATED CIRCUITS

ANTI COMPETITIVE

PRACTICES IN

CONTRACTUAL

LICENSES

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STRATEGIC ELEMENTS � PROTECTION OFFERED BY EACH ONE OF THE TOOLS

� PERIOD OF VALIDITY

� GEOGRAPHICAL LIMITS

� ENFORCEMENT FEATURES

� LICENSING ISSUES, BENEFIT SHARING

� OTHER LEGAL IMPLICATIONS

A clear appreciation of these…. Imperative for all IPR players

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Gillette • Manufacturers of male and female grooming

products, writing instruments and correction products, tooth brushes, oral care appliances, and alkaline batteries.

• Products include blades, razors, shaving preparations and hair epilation devices among others.

• Internationally recognised brand names such as BRAUN, PARKER PEN, WATERMAN, LIQUID PAPER, ORAL B, DURACEL….. Flagship Brand .. GILLETTE

• Products protected and nurtured by Trademarks in various parts of the world

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Gillette Gillette Company Asset Values (US $ million)

Value ($ m)

Total (%)

Working Capital Fixed/Other Assets Intangible Assets (est. 10% of TIC) Intellectual Property

2,850 5,131 5,854

44,700

4.9 8.8

10.0

76.3 Total Invested Capital (TIC)

58,535

100.0

Information source: PRICEWATERHOUSE COOPERS publication

“ Valuation of Intellectual Property”

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Managing IPR … A framework

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Options available to the IPR

Holder • Exploit the IPR himself

• License the IPR to another party (s) with mutually negotiated benefit sharing arrangements

• Cross License for mutually independent working and / or collaborative working

• Assign the IPR to another party (s) for an appropriate return

• Barter rights

• Establish a franchise system involving other parties

• Take action against those who infringe his rights

• Let the rights selectively lapse in certain countries

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Realising Value

• Valuation of Knowledge and IPR

• Licensing of IPR

• IPR Insurance

• IPR as a collateral

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How does one realise the value of

one’s intellectual assets

A structured audit is necessary

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Hello Kitty – New Jewellery Collection by Kimora Lee Simmons and Judith Leiber

Hello Kitty's parent company, Sanrio, signed a licensing deal with powerhouses Judith Leiber and Kimora Lee Simmons to produce a luxury accessory collection of the girls' icon. »

Calvin Klein Expands Bridge BusinessCalvin Klein Expands Bridge BusinessCalvin Klein Expands Bridge BusinessCalvin Klein Expands Bridge Business

Calvin Klein Inc. announced last week it has signed a licensing deal with an affiliate of Italian manufacturer Fingen SpA to reintroduce CK Calvin Klein clothing line and accessories in Europe and the Middle East starting next spring.

PHL Plans Worldwide Expansion of Porsche Design

German luxury automaker PorschePorschePorschePorsche and its licensing and trading company Porsche Lizenz- und Handelsgesellschaft mbH & Co KG (PLH) intend to push the worldwide expansion of the Porsche Design brand and to introduce a new store concept along with new licenses, including men’s sportswear line, reports fibre2fashion.com. »

Expectations High for Beyonce`s Ready-to-Wear Line »

International film and recording star, Beyonce Knowles, today announces a joint venture with Arthur and

Jason Rabin. This partnership will provide the infrastructure for licensing and brand management to the

new Beyonce fashion label. In turn, Beyonce Source: fashiongates.com

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IPR Strategies

• Effective use of International Conventions

• Strategic options in the statutory provisions

e.g. divisional applications, continuation,

and continuation in part

• Extending life of an invention e.g. Claritin

• Joint IPR

• IPR Leveraging

• IPR Litigation as a strategy

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IPR Portfolio Building

Seed, nurture, cultivate and harvest

Inventions to create the Present,

Immediate Future and distant future

portfolios

Measuring IP Performance

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Beware !!!!Beware !!!!Beware !!!!Beware !!!!

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� Institutional IPR Policy

� Integrating IPR into business strategy &

project management

� Effective Use of IPR information

� Identifying areas of possible infringements

� Licensing strategy

� Policing of institutional IP assets

� Litigation strategy

� IPR audit

� Effective utilisation of International

Conventions.

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Building Competitive Edge Patents and Designs

Registration…… a few

case studies

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Anatomy of a Patent Title, Inventors, Assignees, Date of filing, Date of Publication, Date of Grant, A, International Classification, National Classification Application number, Patent Number; Abstract BACKGROUND OF THE INVENTION Description of the Prior Art SUMMARY OF THE INVENTION BRIEF DESCRIPTION OF THE DRAWINGS DETAILED DESCRIPTION PREFERRED EMBODIMENTS Claims

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ELECTRIC PLAID PRODUCT SPECIFICATIONS!

Is it a computer display or a hand woven

textile?

IFM's Patent Pending Electric Plaid TM looks

like a beautiful, soft textile artwork, but changes color like a computer display.

IFM's Electric Plaid is a unique textile display

technology and design material. It is used by

IFM to create hand woven, sensuous individual artworks, interior design and architectural

surfaces. Electric Plaid combines woven

electronic circuits, color-change inks and drive

electronics, to add TIME AND MOTION to textile

patterns and design. Patterns change color slowly over time, to give you information or

change the decor of the room. Electric Plaid is a

reflective (it doesn't light up!) color-change

medium. Electric Plaid can be combined with

IFM's textile sensors, StitchSwitch, to create fully interactive textiles and INTERACTIVE

ARTWORKS artworks

Electric Plaid™ Patent-Pending Color-Change Textile Panels

StitchSwitch™

Embroidered and Woven

Light Switches

Woven and embroidered

touch sensors for

controlling lights or other

electronic devices in the

home.

International Fashion Machines.

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A sewing machine is a mechanical (or electrical) device

that joins fabric, using thread, in a manner similar to

manual sewing. Sewing machines make a stitch, called a

sewing-machine stitch, using between one to four stitches.

They include means for gripping, supporting, and

conveying the fabric past the sewing needle to form the

stitch pattern. Most home sewing machines, as with many

industrial machines, use a two thread stitch called the

lockstitch. Some other common machine types are chain

stitch machines and sergers.

Sewing Machines…A case study on Innovations……

Stitch in time with IPR

Mission: A machine to replicate hand-sewing.

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Sewing Machines

Altered needles in the form of a fine steel hook

to create a form of chain stitch

1755 ; Charles Fredrick Wiesenthal,

awarded British Patent No. 701 in for a

double pointed needle with an eye at one end

which enabled it to pass through the cloth

by a pair of mechanical fingers and

grasped on the other side by a second pair.

1790; Thomas Saint awarded British Patent No. 1764

which had an overhead arm for the needle and

a form of tensioning system.

1795-1830; various patents awarded for chain stitch

machines of varying types but non satisfactory functioning.

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Sewing Machines

1830; A French tailor Thimonnier Barthelemy awarded a French patent

It used a horizontal arm mounted on a vertical reciprocating bar,

the needle-bar projected from the end of the horizontal arm.

The cloth was supported on a hollow, horizontal fixed arm,

with a hole on the topside, which the needle projected through at the

lowest part of its stroke. Inside the arm was a hook, which partly rotated

at each stroke in order to wrap the thread (fed from the bobin onto the hook)

around the needle at each stroke. The needle then carried the thread back

through the cloth with the upward motion of its stroke.

This formed the chain stitch, which held the cloth together.

The machine was powered by means of a foot pedal with the stitch

formed on the top of the cloth, not the bottom as with

most other prior chain stitch machine made .

Need felt for lock-stitch for strength. A lock stitch is created by two separate

threads interlocking through the two layers of fabric,

resulting in a stitch, which looks the same from both sides of the fabric.

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Sewing Machines

1834; Walter Hunt’s developed a machine that used

an eye-pointed needle (with the eye and the point on

the same end) carrying the upper thread, and a shuttle

carrying the lower thread. The curved needle moved

through the fabric horizontally, leaving the loop as it

withdrew.

The shuttle passed through the loop, interlocking the thread.

The feed let the machine down – requiring the machine

to be stopped frequently to set up again. No patents filed.

1846; Elias Howe patented a machine that used a similar

method to Hunt's, except the fabric was held vertically.

The major improvement involved a groove in the needle

running away from the point, starting from the eye

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Sewing Machines

Elias Howe did not succeed in finding investors in England

and returned to the USA. He discovered that his invention

was being infringed. He filed patent infringement suits against

the infringers and eventually won his case in 1854 and was

awarded the right to claim royalties from the manufacturers

using ideas covered in his patent.

1851; American Patent to Isaac Merritt Singer’s machine

That combined elements of Thimonnier’s, Hunts and Howe’s

machines and used a flying shuttle instead of a rotary one;

the needle was mounted vertically and included a presser foot

to hold the cloth in place. It had a fixed arm to hold the needle

and included a basic tensioning system.

Howe sued Singer and won the case. Singer was forced to pay a

lump sum for all machines already produced. Singer then took

out a license under Howe’s patent and paid him $15 per machine.

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Sewing Machines

.

Allen Wilson had developed a reciprocating shuttle,

which was an improvement over Singer’s and Howe’s.

However, John Bradshaw had patented a similar device

and was threatening to sue.

Wilson then went into partnership with Nathaniel Wheeler to

produce a machine with a rotary hook instead of a shuttle.

Wilson also invented the four-motion feed mechanism

which had a forward, down, back, and up motion,

which drew the cloth through in an even and smooth motion.

1850s more and more companies were being formed

and were trying to sue each other

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Sewing Machines

.

1856185618561856 The Sewing Machine Combination was formed, consisting of Singer, Howe, Wheeler and Wilson, and Grover and Baker. These four companies pooled their patents, meaning that all the other manufacturers had to obtain a license and pay $15 per machine. This lasted until 1877 when the last patent expired.

1900s;1900s;1900s;1900s; The first electric machines started to appear. At first these were standard machines with a motor strapped on the side followed by motor into a casing. This was followed by computer controlled and use stepper motors or sequential cams to achieve complex patterns.

pganguli©2000-2008

Bernhardt v. Collezione Europa Fed. Cir. 2004) (04-1024)

Bernhardt sued low cost furniture dealer Collezione for infringement

of six design patents. The district court, however,

held that several of patents were invalid under 102(b) for prior public use.

Specifically, the court found that Bernhardt's disclosure of the designs

at a Pre-Market exhibition rendered the patents invalid.

In addition, the court found that Collezione's products

did not infringe the patents.

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Fryett’s Fabrics Settles Hathi Design Infringement Claim Against Natural World

Decision in Favour of Fryett Payment of £55,000, together with undertakings from Natural World to withdraw its Festival Elephant cushion and to deliver up all residual stocks of that design to Fryett’s.

Tessitura A R Export SRL manufactured for Fryett’s, as exclusive

distributor, a distinctive cushion panel design known as Hathi, marketed by Fryett’s within its Porter & Stone collection from June

2000. By mid 2002 Fryett’s had sold over 45,000 metres of Hathi.

Natural World then began to sell a similar design marketed as

Festival Elephant at prices which undercut the Hathi product.

Fryett’s flied suit against Natural World alleging infringement of copyright and seeking an Injunction and damages.

Natural World’s

Festival Elephant

Fryett’s Hathi

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The Court ruled that the perfume, called Timmy Holedigger, could not under any circumstance be confused with Tommy Hilfiger cologne,

nor could it be seen as a competing product trading on the designer's good will.

Besides, Nature Labs LLC, sells numerous other parody fragrances for pets, including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports)

and Miss Claybone (Liz Claiborne). The Court observed that the other trademark holders

have accepted the parody and not challenged Nature Lab's Trademarks.

Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC

The US District Court in New York dismissed Tommy Hilfiger Licensing

Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for dogs, does not infringe on the fashion designer and cologne maker's

trademark.

Nature Labs sells its perfumes in pet and novelty stores, packaged in batches of three similar bottles, bearing slogans like "strong enough for a man, but made for a chihuahua."

pganguli©2000-2008

Shirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001)

Court Decision:

Shirin Guild garments, made as prototypes

for mass-production, and being machine made garments of a very simple design,

could not be regarded as works of artistic

workmanship or works of art. However, Shirin Guild's modifications of the design

of the original Gigli sweater was sufficient for her resulting designs to be original.

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Shirin Guild vs. Eskandar Ltd and Another contd……..

• Eskander Nabavi had been designing chenille and tweed sweaters of a wide, square design since early 1991

• September 1991: Shirin Guild met Nabavi to negotiate production of loose fitting, square peasant style garments and agreed to let Nabavi produce square style garments from her design drawings bearing particular resemblance to a wide sweater designed by the designer Gigli

• Havelock a company produced samples for Nabavi based on the drawings of Shirin Guild and the Gigli sweater sample having a width of 100cm and a V-neck in contrast to the 88cm width and crossover V-neck of Guild's design. In due course a shirt and cardigan of the same square 100cm wide design of the Havelock sample sweater were

also made.

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• A partnership was formed between Shirin Guild and Eskander Nabavi along with two other persons with each partner having a 25 per cent share of profit. There was no agreement that any copyright or design right originally owned by Shirin Guild was to become partnership property. Therefore Shirin Guild remained the sole owner of those rights.

• Partnership was terminated in August 1992.

• Almost a decade after the partnership was dissolved, Shirin Guild filed a suit claiming that -

** Eskander Nabavi had copied her designs to set up his own range of square and wide styles of shirt, sweater and cardigan, in competition to her.

** Her garment designs were protected by copyright as works of artistic craftsmanship, or alternately their shape

and configuration was protected by design right.

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• The key task before the court was :

Whether or not an article was a work of art

was whether the maker had the conscious

purpose of creating a work of art.

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• Observations by the court :

The samples of the Shirin Guild garments,

made as prototypes for mass-production,

and being machine made garments of a very simple design, could not be regarded

as works of artistic workmanship or works of art. However they are examples of new developments in the fashion world.

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• If a sufficient level of independent skill and labour was used to modify an existing design, an original design would result for copyright and design purposes.

• Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Though other designs featuring the wide look existed in the relevant design field of ladies luxury fashion, the essential features of Shirin Guild's designs were not commonplace and therefore, she succeeded in her claim of design right infringement.

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CONTESSA FOOD PRODUCTS, INC. v CONAGRA,

United States Court of Appeals for the Federal Circuit

01-1157

CONTESSA FOOD PRODUCTS, INC.

(formerly known as ZB Industries Inc.),

Plaintiff-Appellee,

v.

CONAGRA, INC.

(doing business as Singleton Shrimp Company and as

Meridian Products),

MERIDIAN SEAFOOD PRODUCTS, INC.,

and OCEAN DUKE CORPORATION

United States Court of Appeals for the Federal Circuit 01-1157

DECIDED: March 13, 2002

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On remand, the district court is instructed to consider features, in

addition to the arrangement of the shrimp on the top of the tray,

regarding the underside of each of the accused products visible after the

packaging is removed. The overall features of the top, side and underside

of the accused products must be compared with the patented design as a

whole as depicted in all of the drawing figures to determine

infringement.

Because the district court did not fully consider the underside of the tray

illustrated in Figure 4 of the ̀ 612 patent when applying the "ordinary

observer" test, we vacate the decision granting summary judgment of

infringement and remand for further proceedings consistent herewith.

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idea stage ..Technology

development

Freezing of options

Position in the protected

Technology grid

Idea Feasibility

Ideas demonstrable

Ideas Actionable

Idea into product/process

Marketable Products/Processes

Alignment with market

time

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Valu

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f IP

to

Pote

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al

Valu

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f IP

Market acceptability

Competitive sustenance

IPR

Management

Product Lifecycle

Value addition

to Organisation

& Market

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IPR Enabled Knowledge Incubation and

Wealth Realisation

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CONCEPTS INNOVATION

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Record Maintenance & Updating IPR Information

Managing Intellectual Property

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What do we do ?

• Formulate Institutional IPR Policy

• Institute Information classification policy

• How do you sign MOUs

• Make all employees aware of the IPR and information classification policies

• Users at unit level made aware of issues & responsibilities. Manual of best practices.

• Set up patent information service

• Structured annual training and awareness workshops

• Protection … establish a continuous process

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The IP Policy Process

• Recognise the Vision and Mission of the Institute

• What are the various activities your institution is involved in

• Interaction of the Institution with the outside world

• Interactions within the institution

• What is the human resource policy the institute say vis-à-vis benefit sharing arrangements, etc.

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The IP Policy

• Who will sign on behalf of the organisation

• Which will be the team to advise on IPR

issues…. MOUs, protection, etc.

• What will be the channel to get it going on

the floor.

• Who owns what?..

• Documentation?

• Disclosures?

• Who will pay for the protection?

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The IP Policy

• When can the Institute Name or Logo be used?

• Faculty participating in courses outside… Can

Institution name be used?

• What will be the mechanism to identify

Institutional IPR infringements or activities in the

market that are damaging to the Institute’s

reputation? Who will initiate actions?

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Motivation for IP Protection and

Management

• IPR Management helps to integrate the

institution’s innovation process with a wide

range of R&D partnerships

• Institutional IPR encourages partnership

with other developers especially with SMEs

in the innovation supply chain.

• Optimal use of extra-institutional

knowledge. Avoid duplication and manage

funs for R&D effectively

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What the Institutional IP Policy

Should Lead to…..

• Achieving the VISION and MISSION of the

Institution.

• Stimulation of creativity and inventiveness through

Framework for Competence and Knowledge

Building

• Rationalisation of investment in human and capital

resources. Avoidance of duplication of R&D

• Optimal use of “Extra-institutional” knowledge

• Integration of the Institutional Innovation Process

with a wide range of R&D and Business Partnerships

©VISION-IPR 2002

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Should Lead to….. • Timely Protection and Management of Institutional

Knowledge Assets…

• Encouragement of partnership with other developers especially with SMEs in the Innovation Supply Chain..

• Earnings from innovations to pay for further research and acquiring other technologies ( e.g. licensing and cross-licensing)

• Recognition to inventors and enhancement of ethical standards in the Institution

• Transparent Benefit Sharing from IP earnings .

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Should Lead to…..

• Creating and retaining leadership in the Knowledge

Market.

• Academic Freedom to operate in a global

environment.

• Guarding the Institution from taking on undue

Financial and Legal liabilities.

• Effective enforcement of Institutions IPRs

• Enhancement of Institutional Image

• Assuring Long Term Growth of the Institution .

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CEO

“VISION-IPR” 103 B SENATE, Lokhandwala Township,

Akurli Road, Kandivli East, Mumbai 400101

Tel: 91-22-28873766

e-mail: [email protected]

Developing a Business Oriented

Curriculum and course Material

for IPR for NIFT

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Key points to consider

• NIFT’s Mission

• Sensitising Students to face a fierce global competitive environment

• Creating Frameworks for NIFT Students and Faculty to derive optimal value for their creations

• Effectively networking with commercial organisations

• Upgrading professional skills in Indian Industry

• Creating new career options in a niche area of global significance.

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IPR Modules

• IPR… an imperative business tools especially in the context of international trade practices, norms, treaties, agreements, etc.

• Introduction to Basic IPR Tools…. Driven by case studies derived from the global fashion industry

• Searching for IPR Information

• Significance of Documentation, Formal Contracts, Structuring of Negotiations, Pitfalls to avoid and essentials to take care of.

• Institutionalising the IPR Process.

Intellectual Property Rights …. A General...

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