IPR Awareness Programme September 3, 2015 Idea Generation By N.K.Sharma Former Managing Director...

IPR Awareness ProgrammeApril 19, 2023

Idea Generation By

N.K.SharmaFormer Managing Director NRDC

At MGM College , NOIDA 13th Nov 2010


Idea to R&D Project to Commercialization

• Idea Generation• Idea Analysis/Feasibility/Selection• Idea Protection• R&D Project Proposal/Approval• R&D Execution – Pilot plant/ prototype

fabrication• Certification/Field trials• Commercial production• Product Life Cycle Monitoring


Idea Generation & Identification of R&D Projects

• Basic Discoveries lead to new products• Laser development & development of Infra Red

Technology has led to at least 100 new products. Security Applications for detecting counterfeit notes

• Teflon has led to 4 new applications- heat resistant cables, non-stick pans, Teflon coated leather products, Teflon gaskets, Teflon based insulating materials, Teflon coated hockey stick, cricket bats etc.

• Plasma Technology has led to development of Plasma TV, Plasma furnaces for various coatings, Plasma welding torches, Plasma based security systems

• Jal Shakti , a high absorbent polymer has led to development of ‘whisper’ & non spill baby pads



• Accidental Discoveries lead to new products

Microwave Oven & popcorn

Radium

A Liquid solidifies when a magnetic field is applied

Magnetic Memory – Shaped memory alloys

Binary Code – Computers

Chemical Light

Balloon for advertising in the night



• Individual Inventions

Well crow

Zip Tie

NRI Girl in USA invents a clock that walks away after the alarm rings

Pop Spanner


For every problem there is an opportunity for a new idea

• Ladies pen• Clothes for the disabled/Sick• Interlocking Tiles• Luggage trolley for moving stairs• Double Decker aero – bridge for AB-380• Tire Puncture Indication Device• Toilet with double flush system to conserve

water• Glucose/Blood drop flow rate detection device



• Incremental Innovations Key Word Concept : reduce, improve, integrate, slow,

increase, coarser, finer, quicker, longer life, additional applications, additional functions, waste reduction, cleaner etc. – applied to end products, components, raw materials, manufacturing process, by-products, environmental impact etc.

Examples:

Globe – reduce cost to Rs 10; Nano – reduce cost to RS one lakh.

New materials for broom – plastic, curled steel wire, composite.

High energy magnets for low cost shock absorber for cycles.


Idea Generation (Contd.)

• Further Examples of Incremental Innovations Electric Iron Press : Development process from Wire Heating Coil to

solid burnout proof semi conductor ceramic heater, thermostat for automatic on/off operation, steam press, foldable insulated plastic handle, integrated concept to reduce accidental fire etc.

Luggage Hand Trolley : Trolley cum sitting stool.

Mixer cum Grinder cum Juicer.

CFC lamps.

High Energy LED Lamps.

Spring loaded spectacle frame.

Double lock in wrist watch strap.


Idea Generation (Contd.)• Combinational Inventions

• Mobile Phone cum Camera

• Mobile Phone with counterfeit note detection device

• Teflon coated Carbon Fiber hockey sticks / Cricket bats

• Blood Bags with Online HIV Detection Arrangement

EXERCISE ------ 1 -------- THE CHALK PROBLEM


IPR SEARCHES

• One Patent leads to another (Patent Searches)• “You have to listen to music to create new

music”• New Use Patents, example anti-magnet shock

absorber• Process Patents• Product patents• Copyright Searches


Other Ways to generate ideas

• Structured Brain storming

• Market feedback

• Buy Back

• Delphi Method

• Suggestion Box

• Complaint Box


STUDY OF NATURE

• God is the best designer and innovator

• Nothing to beat the five human senses – robots, counterfeit detection

• Binary code vs five digit vs decimal system

• Indelible ink for election purposes - Henna

• Chemical light - Jugnu


Structured Brain Storming

• Choose a theme – cost reduction, energy conservation, new packaging, safety, security, etc

• Select a problem – faced by clients, dealers, suppliers, employees

• Invite possible solutions

• Analyze solutions and select one


MARKET FEEDBACK

• Primary/ secondary market surveys

• Feedback from existing clients/ suppliers / dealers

• Feedback from competitors

• New tender specifications

• New developments in other related businesses/ products


Do you know your competitors

• BRBNMPL• State Printing Organizations• Private competitors- Lunch ticket companies -

Lottery, Races, Metro and other tickets• Have you studied their products• Possibilities for elimination/ joining hands with

Competitors• Exercise – What is your competitor thinking?


DELPHI METHOD

• Based on principal that forecasts are better from structured group of experts

• Define theme/area/problem/idea• Identify & Select 5 to 6 external experts for

suggestions/ comments• Expert facilitator tries to bring consensus

among the experts by rating suggestions• Select optimum solution


Selection of R&D Projects• Identify risk factors in development (Assess, eliminate, reduce)

• Assess in-house Technical feasibility (capability in-house)

• Market Risk Factors

• Budget Risk factors

• Time Constraints

• Skilled / Technical manpower Constraints

• Assess R&D infrastructure requirements for the project

• Environmental risks

• Govt. Policy, Rules & Regulations impediments

• Cost of production estimates vs market competition

• IPR infringement Risks

• Exercise -Throwing a ball


Selection of R&D Projects• Risks in Transportation, storage, use of the raw

materials, by-products, end products etc to the operators and the infrastructure

• Stability Risks

• Statutory Certification Risks

• Competitor may take a lead


Major IP International Agreements / National

IP Acts

• Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1st Jan 1995.

• The Patents Act 1970 as amended by Patents Amendment Act, 2005

• The Designs Act, 2000.• The Copyright Act, 1957 as amended by copyright

Amendment Act, 1999.• The Layout Designs of Integrated Circuits Act,

2001.


Definition of IP

IP covers inventions in all fields of human endeavor; scientific discoveries; industrial designs; trademarks, service marks and commercial names and designations, protection against unfair competition, copyrights and related rights to literary, artistic and scientific works; performances of artists, phonograms, broadcasts and specifically “all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields”


• Evaluating the potential of an R&D result for obtaining IPR

• Evolving strategies for more effective protection at minimum staggered cost

• Cost of obtaining and maintaining IPR

• What to file (relevant IPRs) , where to file, When to file and How to file? Countries, Regions (EPO), PCT

• What Route to follow particularly in respect of patents, design registration and registration of integrated circuits?

IP Strategy Development


Types of IP

• Patents (Product and Process) and Utility Models (Including Business Method Patents).

• Copyright and related rights (including Data Protection).• Industrial Designs.• Trade Marks (including Collective, Certification and

Service marks)• Confidential Information (Trade Secrets).• Layout Designs of Integrated Circuits (ICs).• Geographical indications and indications of source and

appellations of origin.• Plant Varieties and plant Breeders Rights.


Inventor Technical details of invention

Submission to Patent Filing

AgenciesNovelty assessment

through patent search and decision for filing

Drafting & Filing

Processing with

patent office

Grant

“Patent, Publish and Prosper” rather than “Publish, or Perish”

Letter Document

Interaction with Patent attorney

ONLY FILING


Major IP International Agreements / National

IP Acts

• Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1st Jan 1995.

• The Patents Act 1970 as amended by Patents Amendment Act, 2005

• The Designs Act, 2000.• The Copyright Act, 1957 as amended by copyright

Amendment Act, 1999.• The Layout Designs of Integrated Circuits Act,

2001.


Patents, which resulted in Business Disasters • Polaroid’s instant photography patent cost Kodak over

US$ 3 billion. Minolta in 1991 was forced to pay US $ 127.5 million to Honeywell for infringement of auto focus camera patent.

• Dr.Reddy Labs earned US$ 5.5 million in licensing of a new anti-diabetic drug to a large European Pharma major.

• Paragon paid Proctor & Gamble US $ 163.5 million plus royalties on all its diaper sales.

• GE was forced to pay Ponar Corp in 1997 US $ 128.7 million


DYNAMIC RELATIONSHIP BETWEEN IPR ACTIVITY AND COMMERCIALISATION

Maintenance

Grant of Patents

Multi-National Filing

Int. Patent Filing

Patent Filing (PCT/National)

Months

12 18 24 30 36 42

Globalisation

Commercialisation

Semi-Commercialisation

Field Testing/ Clinical

Prototype Pilot Scale

Idea Stage


Knowledge BaseLab Scale Proof

of Concept Pilot PlantSemi Commercial

Commercial

A B C D EDSTUGCDBTMEPI

CSIRICARICMRCFR&TCA&SR

Public & Private Banks

Science Dev.StageJoint Technology Development Stage

Friend

STAC

HGT

PATSER

Public Venture Capitalists

VCF-IDBI, SIDBI

RCTCTDICI

0%TDB

SPREAD


STRATEGIES FOR INTELLECTUAL PROPERTY PROTECTION

WHICH TYPE OF IPR IS TO BE USED ? WHERE TO FILE IPR ? PLANNING OF IPR EXPENDITURE WHEN TO INITIATE IPR ACTIVITY ? WHAT TO DO WHEN IPR

INFRINGEMENT OCCURS ?


WHICH TYPE OF IPR IS TO BE USED

PRODUCT PATENTS

PROCESS PATENTS

INDUSTRIAL DESIGN REGISTRATION

LAYOUT DESIGN OF INTEGRATED CIRCUITS

COPYRIGHT

STRAIN REGISTRATION

TRADEMARKS

TRADE SECRETS

GEOGRAPHICAL INDICATORS


WHERE TO PATENT PRODUCT/TECHNOLOGY USER COUNTRIES

COMPETITOR COUNTRIES

COUNTRIES HAVING RAW MATERIAL

RESOURCES

COUNTRIES HAVING LARGE POPULATIONS

COUNTRIES HAVING STRONG IPR

ENFORCEMENT SYSTEM

PCT APPLICATION VS. NATIONAL ROUTE


PLANNING OF IPR EXPENDITURE

EXPENDITURE VS. DEVELOPMENT SCHEDULE

COUNTRY BLOCKS

DELAY IN EXAMINATION/ FILING FINAL SPECIFICATION

MAINTENANCE OF PATENTS


WHEN TO PATENT

PRIOR TO PUBLICATION

TESTING/MARKET TRIAL STAGE

FILING PROVISIONAL SPECIFICATION

COUNTRYWISE SCHEDULING - INDIA, EUROPE AND OTHER COUNTRIES


PATENTING ABROAD

OPTIONS AVAILABLEA) SEPARATE NATIONAL APPLICATIONSB) EUROPEAN PATENT CONVENTIONC) PATENT COOPERATION TREATYD) OTHER REGIONAL PATENT SYSTEMS * ARIPO * OAPI * EURASIAN


APPROXIMATE INITIAL COST OF FILING A PATENT APPLICATION ABROAD

Rs.

1. AUSTRALIA 60,000

2. BANGLADESH 25,000

3. CHINA 1,00,000

4. E.P.O. Designating 5 countries 1,50,000

5. INDONESIA 40,000

6. MALAYSIA 30,000

7. NETHERLANDS 35,000

9. THAILAND 55,000

10. U.S.A. 80,000

11.U.K. 90,000


IPR INFRINGEMENT

PROBLEMS OF DETECTING INFRINGEMENT

LEGAL RETAINERSHIP

SHARING LEGAL EXPENSES


IPR Business strategy Tricks • Use of “Patents of Addition” to reduce costs (as

much as Rs. 50 lakhs)• Extend life of patent by first filing product patent

and then process patents, particularly for new chemical entities.

• The 42-month patent marketing war.• How to detect patent infringement.• Patents of Addition-to reduce patenting costs.


How to acquire useful Confidential Information

• International patent search through key words.• Structured patent search using International patent

search engines such as Devernet.• US copyright search is now possible.• Through Purchase of Tender documents (largest

source of design information for consultants)• Patent citation Index.• Patents filed by competitors.• PHD thesis of students.


TECHNOLOGY ASSESSMENT AND VALUATION


TECHNOLOGY RELATED FACTORS

• Type of Technology

– Simple

– Complex

– Disruptive

• State of Development

– Lab Scale

– Bench Scale

– Pilot Scale

– Semi Commercial

– Commercial ( Life Cycle Stage of S-curve)

Contd..


TECHNOLOGY RELATED FACTORS (Contd.)• Testing / Certification of end products

– Status of Statutory Certification– Product Quality– User Feedback

• Stage of Development of Bye Products and Pollution / Waste Minimization

Contd..


INTELLECTUAL PROPERTY RELATED FACTORS• Type of protection

– Patents ( India, other countries)– Design Registration– Copy right– Integrated Circuits

• Confidential Information– How difficult it is to replicate the technology– Technology Replication safeguards– Catalyst– Enzymes– Hidden technical features

• Scientist Confidentiality Status

Contd..


TECHNOLOGY COMPLETENESS ASSESSMENT

• Know-how manual Completeness

• Process Optimisation ( Cost & time)

• Process parameter Boundary Condition Specifications

• Technical Danger / risk factors ( such as risk of explosion / contamination, raw material quality verification, worker safety, pollution control)

• Risk assessment for shut down / down time for introducing new technology

Contd..


• Market and Business Potential Factors– Status of Competing Technologies ( International Patent

Search)

• Type of Application– Single vs Multiple industry Uses– Size and value of market– Market Entry Barriers

• Funding Related factors– Project Development Cost– Availability of Technology Commercialization Funds

• From Market (Equity)• From Banks• From Technology Development Funding Agencies / Schemes

Contd..

OTHER FACTORS


• Scientist Related Factors– Reputation and Experience of Technology Development

Institute / University– Track record of Scientists (Industry experience)– Availability of Scientists

• Stability• Mobility• Transfer on deputation

• Technology Transfer Factors– Cost of Technology– Logistics of Technology Transfer– Provision of Post Technology Transfer Services

• Process Optimization• De-bottlenecking• Supervisions of Testing and Commissioning


• Formulating a Technology Transfer Strategy– Territory Exclusivity – Period Exclusivity– Application Exclusivity– Coexclusive Territories– Multiple Licensing– Cross-Licensing– Buy-Back Arrangement– Mother Licensee Concept – Transfer of technology through sale of machinery

with embedded technology.


• ABILITY vs RISK PERCEPTION

• MAXIMIZING R&D RESULTS / IPR PORTFOLIO

EXERCISE 2-----------THE CIRCLE PROBLEM


THEORETICAL EVALUATION METHODS 1. Cost Based Evaluation

(a) Actual Costs - costs incurred in R&D work - cost of protecting IPR

(b) Replacement Cost Estimate of the cost to develop alternate/ equivalent technology

2. Comparable Market Value

- Value obtained by reference to actual licensing terms for comparable technologies in recent times

Depends greatly on industry norms and country to country


3. Income Method

- Cost based on determining the expected profits that a Buyer will make.

4. Client Based Market Valuation- percentage of Sales

Turnover

- Technology Fee determined as a percentage of around 5-10% of the turnover/project implementation cost of the buyer

- Technology Fee charged split into up front

lump sum amount and annual royalty paid on sales.


5. Patent Related Evaluation Index Based on Patent Evaluation

gradings for:

- Specific Evaluation of Rights - Transfer and Distribution

Potential - Evaluation of Business

Potential


6. PRACTICAL EVALUATION METHODOLOGY

Objective: To determine technology / IPR value for a specific client.

Value depends on the intention/interest of Buyer

- Genuine Buyer whose intention is to manufacture

- Buyer has similar technology, wants to buy and Block IPR to avoid competitors.

- Buyer wants joint development


- Buyer wants to avoid nuisance value

- Fake Buyer, only wants to gather information and develop his own technology.

Work out the intrinsic worth of technology using theoretical

evaluation methods.

Using industry norms and background of buyer determine lump sum premium and royalties that could possibly be agreed to

Negotiate and finalise price of the technology (IPR) linked to various terms and conditions of licence agreement viz. Exclusivity, minimum royalty payable, period of payment of royalty, ownership of future developments etc.


Consultant’s Role in IP Protection and Technology Transfer


WHO NEEDS CONSULTANTS’ SERVICES FOR IPRs or

TECHNOLOGY TRANSFER

NEW ENTERPRENEURS – Identifying Proven Technologies

EXISTING INDUSTRIES - Identifying New Technologies

R&D INSTITUTES & UNIVERSITIES – For Upscaling and marketing R&D Results

INDUSTRIAL PROMOTION ORGANISATIONSFINANCIAL INSTITUTIONSSTOCK BROKERSGOVERNMENT


CONSULTANTS’ SERVICES FOR R&D INSTITUTES

IDENTIFYING NEW AREAS FOR R&D INDEPENDENT TECHNOLOGY EVALUATION IDENTIFICATION OF PROSPECTIVE CLIENT(S) CONDUCTING MARKET SURVEYS PREPARATION OF FEASIBILITY/ PROJECT REPORTS FORMULATING STRATEGY FOR IPR PROTECTION DESIGN OF PILOT OR SEMI-COMMERCIAL PLANTS


CONSULTANTS’ SERVICES FOR NEW ENTERPRENEURS

IDENTIFYING NEW OPPORTUNITIESSOURCING TECHNOLOGYTECHNOLOGY EVALUATIONMARKET POTENTIAL SURVEYSPREPARATION OF FEASIBILITY/ PROJECT REPORTSARRANGING PROJECT FINANCESDESIGN & ENGINEERING/ UPSCALINGPROJECT MANAGEMENTPREPARATION OF MARKETING PLANSTEST MARKETING


CONSULTANTS’ SERVICES FOR INDUSTRIAL PROMOTION ORGANISATIONS

IDENTIFYING NEW INVESTMENT OPPORTUNITIES SOURCING TECHNOLOGIES TO BRIDGE THE GAPS

DESIGN OF INDUSTRIAL PARKS/ESTATES

TECHNO-ECONOMIC EVALAUATION OF PROJECT PROPOSALS


CONSULTANTS’ SERVICES FOR EXISTING INDUSTRIES

IDENTIFYING TECHNOLOGY GAPS

SOURCING TECHNOLOGIES TO BRIDGE THE GAPS

FORMULATING DIVERSIFICATION PLANS INTEGRATED WITH TECHNOLOGY DEVELOPMENT / ACQUISITION

FORMULATING TURN AROUND STRATAGIES

FORMULATING 5-10 YEAR TECHNOLOGY PLANS


PREPARATION OF 5/10 YEARS TECHNOLOGY PLANS FOR INDUSTRY

STUDY OF EXISTING INFRA-STRUCTURE AND PROCESS PLANTS

VERTICAL/HORIZONTAL DIVERSIFICATION POSSIBILITIES

IDENTIFICATION OF NEW TECHNOLOGIES (INDIGENOUS AND FOREIGN)

SOURCING OF THESE TECHNOLOGIES PREPARATION OF THE 5/10 YEAR TECHNOLOGY PLAN


• WHAT IS YOUR COMPETITOR THINKING

EXERCISE 3-----------THE TAPE PROBLEM


Publicity :

Where clients approach the inventor

Free publicity through interviews / news items in various media/TV, Newspapers, relevant technical magazines.

Advertisements : Paid / Complementary

Trade Fairs / Exhibitions:

HOW TO IDENTIFY HOW TO IDENTIFY PROSPECTIVE CLIENTS PROSPECTIVE CLIENTS

FOR A TECHNOLOGYFOR A TECHNOLOGY


Direct Mailing of preliminary information on technology to:

Suppliers of raw materials required in the process of manufacture

Companies having competing products

Importers of the products

Companies who have existing infrastructure ( plant and machinery) required for manufacture of the product.

Through Project Mangers of sector specific industrial parts e.g. Technology Parks, STEPS

Cross licensing possibilities


IP POLICY• Depends on Industry Sector – Drug & Pharma, Bio-technology, IT and Computer Software, Manufacturing & Processing, Consumer Durable Goods etc.

• Depends on Complexity of technology

• Depends on quantum of funds required for successful commercialisation

• Depends on type of owner of IPR (R&D Institute,Industry, University etc.)

• Depends on size of Industry – MNC, Large Industry with In-House R&D setup, SME, Start up High Tech Industry


IP Policy – Basic ElementsRelevant IPR’s

Budgeting for IPR related activities (Filing, registration,maintenance,infringement,marketing etc)

Organisational IPR setup (Committees for making IPR Decisions)

Policy regarding self exploitation Vs licensing to other Parties /Ancillary units/ JV partners or Franchisees

Sharing of technology fees earned with employees

Confidentiality Agreements with employees and associates (Suppliers, fabricators, Testing Agencies etc)


Steps to Formulate an IP Policy for your organization.

1. Clearly define the objectives of the IPR Exploitation Programme.

2. Formulate Basic IPR strategy to achieve the objectives.Remember IPR activity is dynamic and not static- It has to enmesh with the R&D commercialization activity on a continuing basis.

3. Integrate IPR strategy with overall business strategy for the

organization.


IP Opportunities for TCE

• No Major IP Consultancy Company in the Country. TCE can have In-Group clientele of around 75 Tata Group Companies.

• TCE can formulate a specific IPR policy for each of these companies & then for other non-TATA group Companies.

• Patent Mining management for specific clients.• TCE can provide consultancy services for International

patent / copyright searches.• TCE can act as a Consultant for formulating an IPR

filing strategy for major inventions.


IP Opportunities for TCE (Contd.)

• Evaluation of IP assets in M&A agreements.• IP watch service for its clients.• IP infringement information services to its clients.• Training on IP matters.• Patent analysis for its clients• IP & the stock market brokers – advisory services. • Thus, becoming the leader in providing IP services

in India.


IPRs important to consultants/other Tata Companies

Consultants (TCE)

Confidential Information Relating to Clients, sub-consultants and employees Acquisition of Confidential Info and prevention of disclosure of Confidential Info to others

Industrial designs - Architectural Work & Drawings, Other Aspects relating to Aesthetics of a particular engineering projects

(digital fountain clock in public places like airports, multiplexes, shopping malls)

Patents : Business Methods Patents (aircraft business class 1A-1C reservation example)


IPRs important to other Tata Companies

TATA MOTORS

Patents- particularly for nano particle coatings, new alloys/materials (New Rubber/Polymers), suspension systems, new chemical processes for pickling painting, forging, casting etc, patenteable industrial designs which have functional utility in automobiles such as automatic tyre puncture indication device), Automatic Adjusting headlights for corners, Fibre reinforced plastic for fuel tanks, coolants)

Industrial designs - All parts of the automobiles which are visible such as headlights, mudguards, tail-lights, interiors, storage spaces etc.

IC design registration : for various applications in Auto (GPS systems) Trade marks / Brand Names : Brand names for the bought out

components such as stereos, ACs, Tyres etc.


Major Business Opportunities for TCE – New Technology

S.No. Business Area

Specific Opportunities

1. Hospitals Tele-medicine Medical Toursim Hospital Imaging Systems SCADA for Hospitals Early Disease Warning Systems

2. Airports A-380 – double deck aero-bridge, passenger luggage handling systems, runaways re-designs, cleaning systems

3. Amusement & Gaming Complexes

New Games, Concept Shopping Malls, Golf Courses (Hybrid), Heritage Tourist Complexes, Luxury Shipping Liners


Major Business Opportunities for TCE – New Technology

S.No. Business Area

Specific Opportunities

4. Sports Stadiums

2010 Commonwealth Games in Delhi Indian bid for 2020 Olympic Games


FOLLOW-UP TASKS - Domain Focus Groups

• Identify the sub-sectors • Patent, Industrial Design and Copyright Mining –

through IPR Searches, RFP Documents etc.

• Mapping the Relevant IPRs for the sub-sector

• Prepare a Strategic Concept Paper for the domain as a business opportunity.

IPR Awareness Programme September 3, 2015 Idea Generation By N.K.Sharma Former Managing Director...

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Transcript of IPR Awareness Programme September 3, 2015 Idea Generation By N.K.Sharma Former Managing Director...