IP Value & Patenting'13
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Creating Valuethrough
INTELLECTUAL PROPERTY
Presented by
Anuradha Maheshwari
Lex Mantis, Advocates Legal Consultantswww.lexmant is .com
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Scheme of Presentation
Understanding locked value in IP
IP in IT
Protecting IPBest methods
Debates & Issues
Extracting value
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Innovation Phenomenon Process of ideation! Great ideas!
Transformation of knowledge into new products,
processes, and services
Discerning & meeting the needs of customers;
Improvements in marketing, distribution & service;
Multidisciplinary connecting many spheres of activity.
Multiplier effect sparking innovation in other areas. Transformational force changing industries, markets,
and society
Forms innovators intellectual property2013 (c) Anuradha Maheshwari, LEX
MANTIS
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Knowledge Power
Knowledge = proprietary informationthat may or may not be shared
Knowledge comes with a price tag =Product, Innovation
Product = valuable expression,technology, mark, confidential info,design etc.
Saleable asset at any stage frominception to crystallization - formulas,
concepts, architectural designs etc.
Traded in the form of sale,technology transfers, licenses,franchises, merchandising etc.
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Intellectual Property Innovative idea behind the
technology.
Any creation of the human mind-
locked in a tangible form
Intangible moveable property
Private property legal protected
Can be used, accessed,
distributed creating variety of
rights
Valuable in protecting work /
products that are difficult /costly
to develop, but cheap to copy.
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Finding Value in IP In all saleable Ideas- technology, inventions, marks, etc Any stage from inception to innovations
In the demand generated for the idea/product
The Brand created by the demand In the ways of marketing- brand strategy/business
methods
Exploitation of the idea- licensing, franchising, etc
Protecting the idea- infringement suits & damages
All comprise intangible assets of the owner of the IP
Knowledge, information, creativity, inventiveness are rapidly replacing
traditional & tangible assets as valuable drivers of economy.2013 (c) Anuradha Maheshwari, LEX MANTIS
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Knowledge PowerTo create something from nothing, in all the
natural world is a uniquely human ability.
Using our minds we originate works of arts,
generate inventions, accumulate knowledge
and discover truths about the world we live in.
What sets the information age apart from
prior periods in history is the price tag we puton these intellectual creations
Marlin Bennett in Knowledge Power
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Intellectual Properties
Statutory IPs Common Law IPs
Patents
Copyrights
Trademarks
Industrial Designs
Geographical Indications Plant Varieties
Semi Conductors
Biodiversities
Unregistered TMs
Trade dress Trade secrets
Confidential Information
Technical Knowhow
Client list
Info on sourcing of rawmaterials
HR management
Traditional Knowledge
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Copyrights Indian Copyright Act 1957-1999Patents Patents Act of 1970-2005
Trademarks Trademarks Act of 1999
Geographical indications Geographical Indications Act-1999Industrial designs Designs Act of 2000
Layout Designs of IntegratedCircuits
Semi Conductor, IC Layout DesignAct,2000
Plant varieties Protection of plant Varieties &Farmers Rights Act,2001
Biodiversity Biodiversity Act 2002
Undisclosed information-tradesecrets Indian Contract Act 1871
IP in India- TRIPS Regime
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Constitution of IP
2013 (c) Anuradha Maheshwari, LEX MANTIS
Intellectual Property
Ownership
Intangibles
Labor intensive
Time boundTransferable
Bundle of Rts
ValuableAssets
xxxxxxxxxxxxxxProtected
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The Hidden Value
Economicgrowth
Knowledge+
Imagination
Idea
(solution)
Innovation(product)
IntellectualProperties
(hiddenvalue)
Commerce
IP is not wealth -
it is a tool that
properly used will
produce wealth
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Intellectual Property Rights Umbrella term
Legally protected rights& assets created out of goodideas - exercise of the human intellect
Bundle of exclusive rightsof two kinds:Privileges
Exclusions
Claims & entitlements
Enjoyment only for a limited period of time Protected since 500BC but actively from the 15th
century
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History of Indian Patent System
1856 The Act of 1856 on protection of invention
1911 Indian Patents & Designs Act
1972 Patents act (act 39 of 1970)
only process patents | 14 year, 7 year (food/drug)
1975 India joins WIPO
1999 India signs TRIPS (after joining WTO)
10 year ultimatum starting from 19951999, 2002,
2004, 2005
Amendments
-Product patents | 20 years patent period | EMR | Burden of
Proof
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Object of Patent Law To encourage scientific research, new
technology and industrial progress
Official system to reward fruits of ingenuity
Legally recognize the exclusive right of a
patentee to gain commercial advantage from
his invention for a limited period.
To grant monopoly rights to own, use or sell
a patent.
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What is a Patent? A patent is a granted Monopoly Right By the government - Controller
o To an inventor or his assignee
o For an invention
o For a limited period- 20 yearso Valid within the country of grant-territorial
An Exclusive Right - prevents others from
o Making, using, selling, licensing, or Importing the claimed
invention Patent is a Property Rightclaims, ownership & transfer
Patent Act 2005-Patent means a patent for any invention
granted under this Act
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Invention Invention is a successful technical solution to a
technical problem.
Inventions could be broadly broken up into 2
categories- scientific (engines, x-rays) or non-scientific (music, story
Material progress of the global community has been
immensely impacted and aided by a wide variety ofInventions
Estimated 3.5 million unexamined patent
applications Over 2 hundred years the USPTO has granted more than 5
million patents2013 (c) Anuradha Maheshwari, LEX MANTIS
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Not Patentable
Atomic energy
Traditional knowledge
Scientific principle/ Abstract theory/frivolous theories
Mathematical or business methods/algorithms or computer
programper se Discovery of natural substances
New form of a known substance
Mixture of known compounds
Methods of agriculture2013 (c) Anuradha Maheshwari, LEX MANTIS
http://images.google.com/imgres?imgurl=http://www.serenityphotography.co.uk/People%20-%20Portraits%20and%20Pictures%20of%20People%20from%20Around%20the%20World/Oxen%20Cart.JPG&imgrefurl=http://www.serenityphotography.co.uk/People%20-%20Portraits%20and%20Pictures%20of%20People%20from%20Around%20the%20World/slides/Oxen%20Cart.html&h=500&w=500&sz=258&hl=en&start=23&sig2=BKJwTzJZZZ6dKq4ADG-lqA&um=1&tbnid=1SemU4wUknpuGM:&tbnh=130&tbnw=130&ei=5EQ8Rp7HHpXYgAP2jLT2CQ&prev=/images?q=oxen&start=20&ndsp=20&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Nhttp://images.google.com/imgres?imgurl=http://www.xango.com/images/mangosteen-tree.jpg&imgrefurl=http://www.xango.com/learn/mangosteen-tree.html&h=282&w=460&sz=58&hl=en&start=15&sig2=lBpp9Tp9IJOLawzYpeTEHQ&um=1&tbnid=BhwI4q0IFfa1AM:&tbnh=78&tbnw=128&ei=skQ8RpDCOp6oggPs5fzIAg&prev=/images?q=tree&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Ghttp://images.google.com/imgres?imgurl=http://www.bestayurveda.com/ayurveda_leaf.jpg&imgrefurl=http://www.bestayurveda.com/&h=250&w=299&sz=10&hl=en&start=3&sig2=ZXbKeFEvGmrppsvRhzulwQ&um=1&tbnid=mFqvICaYuX6rnM:&tbnh=97&tbnw=116&ei=dEQ8RpS1FqKQggPx2IDFAg&prev=/images?q=ayurveda&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=Ghttp://images.google.com/imgres?imgurl=http://www.rb-29.net/HTML/04.PAAvtnArt/PAShowScans/LateAdditions/A-Atomic.jpg&imgrefurl=http://www.rb-29.net/HTML/04.PAAvtnArt/04Fantasy/12Fantasy.htm&h=364&w=504&sz=87&hl=en&start=13&sig2=OZMtp5YZXAWQIX9Qp-amsw&um=1&tbnid=Gs6Kiv10wF6ubM:&tbnh=94&tbnw=130&ei=T0Q8RvfEO5_0gQP3y-XzCQ&prev=/images?q=atomic+energy&svnum=10&um=1&hl=en&safe=off&client=firefox-a&rls=org.mozilla:en-US:official&sa=N -
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Exceptions Inventions that are frivolous- claiming anything contrary
Inventions injurious to public health, morality or interest
New method of agriculture or horticulture to prevent denial ofwidespread benefit
A process of treatment of human beings, animals or plants- treatmentof muscular spasms.
Mere discovery of new form of known substances which does notimprove known efficacy of the substance- isotopes
New use of known substance or process or invention unless results in
a new product Any medicinal, surgical treatments to render humans, animals free of
disease or increase economic value of product
Any invention created out of traditional knowledge
Inventions relating to atomic energy
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Patent Protection Patentability Criteria
o New & useful- novelty
o Non-obvious- inventive step
o Capable of Industrial
Applications- utility
Patents Act specifieso What are not inventions?
o What are not patentableinventions?
Process to acquirePatents
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Newness/Novelty
Novelty of an invention is dependant on state of prior art Prior art-existing knowledge, similar inventions already known
in the particular field
No novelty in case of anticipation by prior publication or prior
use- turmeric patent attacked on this ground Invention must be new- must involve innovation or
technology not published in any document or used in the
country or elsewhere
Anticipation= Lack of novelty- principle that it would bewrong to prevent a man from doing what he has lawfully
done before the patent was granted
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Patent application filed before 01-01-1912
Published without the consent of applicant
Communication to the Govt.for Investigation
Displayed/Exhibited and notified*
by Govt. in Official Gazette& within 12 months filed
Prior reading- If Paper read by the inventor before Learned
society & application is filed within 12 months thereafter
Prior public working- If the invention requiresreasonabletrials in public and application is made in 12 months
Use and Publication after provisional specifications
No Anticipation
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Inventive Step Invention must carry an inventive step to determine skill
Step must be non-obvious to a person averagely skilled in art
Person skilled in the art need not be an expert in the subject-
common general knowledge is sufficient.
What is obvious cannot be patented
Should not be a logical outcome from the prior art
Should not require any skill/ability beyond that may expect
from the person skilled in the art.
Not beyond normal progress of technology
Invention involves Technical advancement and Economic
significance and not obviousto person skilled in the art
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Usefulness Invention must be useful
Must be of benefit to mankind
Must involve technical advance as compared to existing
knowledge or have economic significance or both.
Inventions having limited usefulness are protected in some
countries as utility models
Industrial activity- Can be made, used in at least one field of
activity or reproduced with the same characteristics as many
times as necessary
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Computer Programs/Software
WIPO: A set of instructions capable, when
incorporated in a machine readable medium, of
causing a machine having information processing
capabilities to indicate, perform or achieve a
particular function, task or result
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Features of Computer Programs
Ingenuity in the idea forming the innovation -it maybe expressed in any language
Made up of machine readable instructions
As source code; object code; executable file
Primary value lies in its functionality than code itself
Nature of software is a hybridtext and behaviour
Innovation is largely incremental & rapid
Almost every 2 years a product is replaced by its
enhanced version
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Issues of Protection Why Software must be protected? Idea based, pure creativity Machines & systems run on software- greatly in demand
High degree of innovation, short shelf life
Unfair competition, piracy & counterfeiting- easy to reverse
engineer
To be or not to be? Patents or copyrights?- conflict & debates
Issue stems from its creativity- invention or mere expression?
Softwares are algorithm based and a logical abstract
expression of process/ principle
U.S. Copyright Law: A computer programme is a set of
statements or instructions to be used directly or indirectly in a
computer in order to bring about a certain result
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Patenting of Software Innovation in software industry rapid aided by
patenting
Helped growth of CP related industries in US
especially for start-ups & individuals
In Europe & India Software patenting not so
popular until recently
Emphasis on software/CP to be of technical
nature- having technical application to
industry or embedded in hardware2013 (c) Anuradha Maheshwari, LEX MANTIS
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Towards Patenting
Gottschalk v Benson 409 US 63 (1972)-o Algorithm convertingBinary Code Decimal into pure binaryo Supreme Court held One cannot patent an idea;o The mathematical formula no practical application
except in connection with digital computer;
Diamond Vs Diehr 81- Arrhenius equation applied to calculaterubber curing time, held software in isolation remains
unpatentable but program related inventions are patentable
Re Alappat94 a claim for the use of general purpose
computing equipment to perform a mathematical operation ispatentable
Another Ruling- software could be patented when novelty
exists in the system taken as a wholeopened flood gates for
business methods2013 (c) Anuradha Maheshwari, LEX MANTIS
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AT&T Corp v. Excel Comms.
1999-Patent claimed a process using aBoolean algebra to derive a value that is used
to generate a message record of long distance
telephone calls for billing purposes. Held that the patent does not claim just the
Boolean principle, but applies it to produce a
useful, concrete and tangible resultwithoutpreempting other uses of the principle.
Held patentable & became a benchmark.
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Indian Position
Indian Patent Officer granted a patent for an invention titledSystemfor creating an Application Program Packagein 1996
Patents (Amendment) Act 2002 brought in Section 3(k) excludedfrom the definition of an invention: A mathematical or businessmethod or a computer programme per se or algorithms
Software can be patented in India, such that;o Method claim should clearly define steps in carrying out invention
o They produce a technical/ mechanical effect- should solve a technical/
mechanical problem
o Is associated to a mechanical system or device in such a way, to be capable
of producing a functional or technical outcome
o Fulfills other patentabity criteria
o Claim orienting towards process/method should contain a
hardware/machine limitation
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SOURCE: Annual Report (2010-11) by the Office of the Controller
General Of Patents, Designs and Trademarks andGeographical Indications
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SOURCE: Annual Report (2010-11) by the Office of
the Controller General Of Patents, Designs
and Trademarks and Geographical Indications
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SOURCE: Annual Report (2010-11) by the Office of
the Controller General Of Patents, Designsand Trademarks and Geographical Indications
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Drafting Software in IndiaDrafting of computer related specifications:
A claim to the computer program in physical ormaterial form, as distinct from the program as anabstract concept
A claim to a computer, or combination of anumber of computers, containing the program
A claim to the process, which the program causes
to take place within the computer when theprogram is operated
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What is Not Patentable Computer programper se
Mere algorithm, business methods
Software that lacks technical effect
Methods with technical effect but lacking
hardware support
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World ViewPatentability requirements in regards to software &
business methods can be categorised into the
following:
Economic utility requirement in Australia, NewZealand and Canada;
Machine-or-transformation requirement in the
United States;
Hardware requirement in Japan and Korea; and
Technical effect requirement in Europe, China and
India.
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TRIPs Provisions Computer programs to be regarded as literaryworks
under copyright law
Registration not mandatory for copyright
Copyright to extend 50 years beyond death of author
Patents to be granted in all fieldsof technology
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Copyright Protection Protects the text and not the results of a
program
Allows the independent development of thesame code by a different person
Does not protect:o Internal design of a machine
o Programs behaviour
o The idea behind the program
Period of protection is excessive, consideringshort shelf-life of software
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Inventions To Be Disclosed
Through complete specifications
Facilitates any one working the invention after
patent expiry
If not disclose patent may not be granted
If granted and then discovered that full
disclosure was not there then patent may be
opposed
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Specifications Specification- technical document describing the
invention
Maybe provisional or complete
Purpose- to make available invention to public onexpiry of patent, to reward a genuine inventor, to guardagainst any harm to public
Essence of the invention- builds the boundaries aroundthe monopoly right of the inventor- anything outsidethe specification cannot be claimed
Specification has to be drafted by skilled professional
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Provisional Specification Filed when the inventor is in the process of
finalizing his invention
It is filed to fix the priority date of the
invention.
The document is only a general description of
the invention- it has no claims
Provisional specification has to be followed by
Complete specification within 12 months of its
filing2013 (c) Anuradha Maheshwari, LEX MANTIS
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Complete Specification Full description of the invention containing all claims over
which inventor seeks monopoly right.
The object is to define the boundaries of the claimedinvention.
Content- Title of the invention
- Full description and disclosure(including best method ofperforming)
- Claims- defining scope of invention- clear and precise
- Drawings (if any)- Abstract
- Declaration of inventorship
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Title
Field of Invention
Background (prior art, problems)
Object of Invention (solution, desired results) Summary (statement of invention)
Brief description of Drawings
Detailed Description of the invention Abstract (brief summary of entire specification)
Anatomy of Specifications
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Definition of key terms
Enablement - clear and concise enabling
skilled person to make and use Best mode - best method of performing
invention
Preferred embodiments - various alternatives
Specific Examples
Description
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Claims
Legally defines thescopeofInvention
Boundary
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Cl i
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Claims Most important part of the specification
Main claim- states the what the invention is in the broadest
possible terms
Subordinate or dependent claims- refers to additional features
Omnibus claim- relates to any arrangement substantially asdescribed as shown in the drawings- protects applicant from
infringement by creation of equivalent alternatives. Ex: for an
instance when a feature of an invention is a movable coil with
the help of a spring, the applicant must claim that any movable
arrangement of the coil with spring or any other equivalent
mechanism would be an equivalent variation of the invention.
Validity of patent can be challenged if claims are too vague or
broad2013 (c) Anuradha Maheshwari, LEX MANTIS
Cl i E l
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Claims- Example
A flashlight for use with batteries, comprising: a tube to hold the batteries;
a lamp; to illuminate
a holder mounted on the tube to hold the lamp; and
a switch mounted on the tube,
The switch being manually movable between on and
off positions and connecting the batteries to the
lamp when in the on position.
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Patent of Addition Patentee can apply for a patent in respect of any
improvement or modification of his protectedinvention
Such patent for improvement is called patent ofaddition or patent for incremental innovation
Term is the same for the remaining period of themain patent
Benefits of filingthe new application gets thesame priority date as that of the parentapplication and same fees
2013 (c) Anuradha Maheshwari, LEX MANTIS
Wh C A l ?
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Who Can Apply?
Any person claiming to be the first & trueinventor- 1stperson to convert the ideas &
scientific principles into a working invention-
physics teacher & his student
Assignee of the true & 1stinventoremployer
Legal representative of any deceased person
who immediately before his death was entitledto make this application
Indian Patent Act follows the first to apply
system and not first to invent2013 (c) Anuradha Maheshwari, LEX MANTIS
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Inventor -true & first
Assignee of Inventor
Legal Representative of Inventor or
Assignee
Who Can File?
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Employee Inventions Inventions made during course of employment
Relationship governed by contracts- express/implied
Generally inventions made by employees would be
patentable in their own name Employees specifically for R&D- patents in name of
employers
Right to apply has to be assigned by theinventor/scientist
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The patent office where the applicant
Resides
Has place of business
Has originated invention
The patent office depending on the
jurisdiction of address for service in Indiafor Foreign applicants
Where to File?
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MumbaiGujarat, Maharashtra,
Madhya Pradesh, Goa,Chhattisgarh, the UnionTerritories of Daman & Diu
and Dadra & Nagar Haveli. Delhi
Haryana, Himachal Pradesh,Jammu and Kashmir, Punjab,Rajasthan, Uttar Pradesh,
Uttaranchal, National CapitalTerritory of Delhi and theUnion Territory of Chandigarh
Chennai
Andhra Pradesh, Karnataka,
Kerala, Tamil Nadu and theUnion Territories of
Pondicherry and Lakshdweep Kolkata
Rest of India
Filing Jurisdictions
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H T Fil ?
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How To File? Application form in duplicate - (Form 1)
Provisional or complete specification in duplicate.
Provisional must be followed by complete within 12 months - (Form 2).
Drawing in duplicate (if necessary)
Abstract of the invention
Information & undertaking listing the number, filing date & current statusof each foreign patent application in duplicate - (Form 3)
Priority document (if priority date is claimed) in convention application,when directed by the Controller
Declaration of inventor-ship where provisional specification is followed bycomplete specification or in case of convention/PCT national phase
application - (Form 5).
International application can also be made under PCT
Manually delivery of hard copy docs at the patent office by post/courier or
hand delivery or E-filing through official portal at www.ipindia.nic.in
2013 (c) Anuradha Maheshwari, LEX MANTIS
Kinds of Applications
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Ordinary application
Conventional application
PCT national phase application Divisional Application
Patent of Addition
Cognate application
Kinds of Applications
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Mandatory but can be filed later within
prescribed time limit
Statement and Undertaking (Form 3)
Proof of right to apply (an assignment)
Declaration of Inventorship
Power of Attorney Request for examination
Documentary Requirements
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Optional requirements to expedite procedure
Request for early publication (Form 9)
Express request for examination - for PCT
national phase application (Form 18 with
additional fees)
Documentary Requirements
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After 18 months from the date of filing U/S 11A
except when
Secrecy direction are imposed u/s 35
The application has been abandoned u/s
9(1)
Withdrawn three months prior to the
publication period
Publication
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Number of Application
Date of filing of Application
Title of Invention
Publication date International Patent classification
Name and Address of the Applicant
Name of the Inventor(s)
Priority details
Parent application no. in case of patent of addition or division
Abstract of the Invention including drawing (if any)
Particulars of Publication
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Subject to satisfaction of two conditions:
Application is published in the Patent Journal
Request for examination has been made by theapplicant or any person interested.
Person interested includes a person engaged
in, or in promoting research in the same field asthat to which the invention relates
Examination
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Voluntaryby filing form 13
To overcome the objection raised by
examiner on issue of sufficiency, clarity orpatentability
Should not go beyond disclosure
Must be by way of disclaimer, correction orexplanation.
Amendments
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Patent Grant Procedure
Filing of patent application
Publication after 18 months
Examination: Grant or Refusal
Publication of grant
Opposition to grant of patent
Request for Examination
Opposition by representation
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Procedural Flowchart
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Procedural FlowchartBASIC CONVENTION
APPLICATION
INDIAN CONVENTION
APPLICATION
PROVISIONAL
APPLICATION
REQUEST FOR EXAMINATION
(within 48 months from date of priority or date of
filing whichever is earlier)
PUBLICATION
(18 months)
PCT INTERNATIONAL
APPLICATION
INDIAN NATIONAL
PHASE APPLICATIONCOMPLETE PATENTAPPLICATION
FIRST STATEMENT OF OBJECTIONS
(May consider Representation)
GRANT
REPRESENTATION
(After publication, till grant)
RESPONSE TO OFFICE ACTION
REJECTION
Within 3 months from the
date on which the
Reference is made by the
Controller to the Examiner
12 months31months 12 months
RE-EXAMINATION
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Grounds of Opposition Patent is wrongfully obtained
Prior publication in any document
Prior claiming
Prior public use
Obviousness Not an invention
Insufficiency of description
Failure to disclose information u/s 8 Conventional application is filed after 12 months
Not disclose geographical origin of bio-material
Anticipation reg. Traditional knowledge2013 (c) Anuradha Maheshwari, LEX MANTIS
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Patentee Rights Exclusive right to use- inventor substantive rights for
20years from date of filing
Monetary rights to exploit- sell, license assign & vend
Exclude others from making /using invention Right to assign
Right to surrender
Right to sue for infringement
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Central Government Powers
Certain limitation on patent rights
- government use of patents
- Compulsory licenses and licenses of rights
- Use of inventions for defenses purposes
- Revocation for non-working patents
- Limitations on restored patents
Central Govt. has right to use invention for purposes ofthe government eg. distribution of medicines and drugs
during epidemics or any emergency.
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Compulsory License
After three years of patent, anyone can request a licensefrom the govt. on these grounds
That the reasonable requirements of the public withrespect to the patented invention have not beensatisfied
That the patented invention is not available to thepublic at reasonably affordable price
Export of pharmaceuticals to poor countries
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Revocation & Surrender
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Revocation & Surrender When the exercise of the patent is mischievous to state
prejudicial to the public
Where after grant patent is being used for invention
relating to atomic energy
Where a compulsory license is granted and theinvention is not available to the public at a reasonable
price
By High court- when a patentee fails to comply with
Government's request to use the invention
By High court- on petition by interested person on
grounds mentioned in s.64- not useful, harmful,
fraudulent etc.2013 (c) Anuradha Maheshwari, LEX
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Infringement of Patents
Infringement constitutes- colorable imitation,immaterial variations, mechanical equivalents,
taking essential features of the inventions
Infringement to be decided on facts of eachcase
Doctrine of pith & marrow is the essence of
the invention which if taken and reproducedin the infringed article by making a variation
would result in infringement- substantial
similarity2013 (c) Anuradha Maheshwari, LEX MANTIS
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Action for Infringement
Suit for infringement
Prayers
- Interim injunction- Damages or account of profit
- Permanent injunction
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IP Leveraging Strategies
Licensing
Business Format Franchising
Joint Ventures
Strategic Alliances and Partnering
Branding
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Commerce of Technology
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Commerce of Technology
Sale or assignment-transfer of ownership/titles exclusive rights to a
patented invention/copyright/trademark..
License/License Contract- permission to use the IP limitedly
Technology Licensing
Merchandise & character licensing
Know-how Contract- could be a license contract or could be direct Franchise or distributorship- reputation, technical info & expertise of one
party is combined with the investment of another party to directly sell
goods or render services to the consumer. Trade/service marks are also
licensed
Technology transfer is a process by which a developer of technology makes itstechnology available to a commercial partner that will exploit the technology
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How Much is the IP worth?
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How Much is the IP worth? Valuating/pricing intangible property-complex
Important to fix price of the property and thefinancial terms of the license
What is the right price?
How much can the company spend? Methods of valuation: Cost approach
Income approach
Market approach Royalty arrangements-regular payments for
specific rights
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Thank You
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Software Piracy
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Software Piracy Business Software Alliance (BSA)released its
annual report on software piracy for 2009which calculated that the commercial value ofunlicensed software that found its way into
global markets last year totalled $51.4billion.
This figure represents a global rise in softwarepiracy from 41% in 2008 to 43% in 2009.
High piracy markets such as Brazil, China andIndia.
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Android Woes
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Android Woes British Telecom has sued Google's Android mobile operating system, as it believes that
the software infringes six patents in its Maps, Music and Android Market applications. The lawsuit also claims that Android's location-based advertising also infringes on
patents held by BT and the telecom giant is claiming billions of dollars of compensation.
"BT brings this action to recover the just compensation it is owed and to preventGoogle from continuing to benefit from BT's inventions without authorization," thelawsuit says.
If the lawsuit is successful then it could mean that Google will have to pay BT royalties
on each Android smartphone and tablet currently in use, and for any they produce inthe future
A large number of companies - Apple, Oracle, Microsoft and eBay are currently in legaldisputes with Google and its Android software over patent infringement.
This could be incredibly costly for Google, as its Android system controls more than 40percent of the smartphone market, with more than 40 million devices being producedevery quarter.
The late Steve Jobs was famously outraged at Android, which he believed had stolenmany patents and ideas from Apple and its iOS operating system used by the iPhone,iPad and iPod touch.
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Infringement Battles
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Infringement BattlesORACLE V. GOOGLE:Oracle is seeking damages of up to $6.1 billion from Google in a lawsuit filed in August 2010 -claims Google's increasingly popular Android operating system violated patents that protect Oracle's Java software,
which it bought through its acquisition of Sun.APPLE V. GOOGLE: Apple has also attacked Google's Android platform, by suing cellphone makers SamsungElectronics, Motorola Mobility and HTC.
APPLE V SAMSUNG: in April this year, claiming Samsung's Galaxy line of smartphones and tablets infringe severalpatents and trademarks. Samsung then countersued, asserting its own patents against Apple.
MOTOROLA AND APPLE: sued each other in October last year, while Apple filed patent infringement suits againstHTC in March 2010. HTC later countersued.
MICROSOFT V. GOOGLE:In October 2010, Microsoft charged its former ally Motorola, saying the U.S. phone maker
infringed nine of its patents in Android-based smartphones. Motorola countersued a month later, accusing thesoftware company of infringing 16 of its patents.
MICROSOFT V BARNES & NOBLE: & its device manufacturers, Foxconn International and Inventec Corporation,claiming patent infringement in Android devices.
HTChas agreed to pay royalties to Microsoft when using the Android platform in its phones.
GEMALTO V. GOOGLE:Chipmaker Gemalto filed a patent infringement lawsuit in October 2010 against Google, andhandset makers Motorola, HTC and Samsung over the Android operating system.
KODAK V. RIM, APPLE:Photography company Eastman Kodak Co filed a complaint against Apple and Research InMotion in January 2010, arguing Apple's iPhone and RIM's camera-enabled BlackBerrys infringe a Kodak patentrelated to a method for previewing images.NOKIA V. APPLE: Nokia sparked a battle with the iPhone-maker, filing a case in the United States in October 2009,claiming Apple infringed 10 of its patents related to wireless communication. Nokia won in June, when Appleagreed to make an undisclosed one-off payment and pay royalties.
MOTOROLA MOBILITY V MICROSOFT: over patent royalties, accusing Microsoft of infringing patents related tovideo game systems.
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Other Wars
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2/22/2013
Other Wars GE forced to cough up USD 128.7 mln to a tiny company called Fonar
for for infringing the latter's patented MRI technology, used to detectcancers and other diseases
Nokia Pays $253 mln to settle patent dispute with InterDigitalCommunications Corporation over a licensing deal for 2G wirelesstechnology in December 2005.
Medtronic awarded $51m in patent infringement case againstBrainLAB AG involving four patents related to image-guided surgicaltechniques and devices.
Microsoft, Autodesk ordered to cough up $133M ( 115 + 18) to a
small technology company Z4 in damages in a patent battle over anti-piracy technology.
Chinese co Proview Technology is suing Apple for CNY10 billion(US$1.57 billion)for trademark infringement for the companysChinese trademark on IPAD.
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Safeguarding IP
Companys IP rights viz-a-vis its employees
IP and Freelance Contractors
Secure IP & prevent IP infringement
Protect companys identity & domain name Respect third party IP
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Conclusion
IP can be valued at every stage from itscreation to its exhaustion
Protection/Registration and enforcement of
your IP rights strengthen the value of an IP
Infringement suits add to the value
Key lies in recognising the IP potential,
awareness of the relevant laws and harnessingit to the fullest.
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J t Ai
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JetAirways Jet Airways was incorporated as an air taxi operator on 1 April 1992 and is
largest airline in India
Company listed on the Bombay Stock Exchange, 80% of its stock iscontrolled by Naresh Goyal through his ownership of Jets parentcompany, Tailwinds
Naresh Goyal, who already owned Jetair (Private) Limited, which providedsales and marketing for foreign airlines in India, set up Jet Airways as afull-service scheduled airline to compete against state-owned IndianAirlines
JetAirways trademark was not registered in name of the company bythat name but in name of the company of which Naresh Goyal was the
promoter. For public subscription of the shares of Jet Airways, the company came
out with an with an initial public offering (IPO) on February 18, 2005.
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JetAirways Major reservation against the IPO was recorded in investors feedback as
the ownership of brand name being with Jet Enterprises & not with JetAirways
Jet Airways then decided to buy the brand from Naresh GoyalsJetEnterprises.
In fact, the non-ownership of Jet Airways brand was listed as a risk factorin the airlines draft prospectus
Jet Airways, has bought back the 'right, title and interest' in the "JetAirways trademark from Jet Enterprise (JEPL), a company owned by itspromoter Naresh Goyal along with Mr Hasmukh Gardi, for a one-time feeof $7 million or around Rs 30.44 crore
Certain other variations of the Jet Airways trademark and certain otherrelated trademarks have also been licensed to Jet Airways by JetEnterprises on an exclusive non-assignable basis for use in India
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EU Position
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EU Position
Article 52 (2) (c) and (3) of the European PatentConvention state:
Schemes, rules and methods for performing
mental acts, playing games or doing business, andprograms for computers as such are notpatentable
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Thank You!