Prof. A. B. SurajIntellecture Seminar Series

Bangalore – November 2009

Session Objectives

To understand the “intangibility” of IPRs

To appreciate the value of protected IP in gaining competitive advantage

To gain an overview of the strategic elements towards better leverage of IP

IPRs – General Bases

Economic (and technological) rationale – aids overall development

Social benefits – enriches the Public Domain and Basic Research

Legal monopoly – towards fair regulation within the territory

Forms of IPRs

Patents – Patents Act, 1970

Copyrights – Copyright Act, 1957

Trade Marks – Trade Marks Act, 1999

Industrial Designs – Designs Act, 2000

Forms of IPRs …

Layout Designs of ICsSemiconductor Integrated Circuits Layout-

Design Act, 2000

Geographical Indications Geographical Indications of Goods

(Registration and Protection) Act, 1999

Forms of IPRs …

Plant varieties – Protection of Plant Varieties and Farmers’ Rights Act, 2001

Traditional Knowledge – partly by Biological Diversity Act, 2002

Trade Secrets – Contractual – no legislation in India

The “Intangibles” Goodwill and reputation

Consumer perception/identification

Scientific and literary acclaim

Advertising reach

Traditional usage and “prominence” enjoyed

Media fame

One form of IPR leads to the other!One form of IPR leads to the other!

Pressures of Enforcement IPRs = fiercely competitive usage;

justifies criminal remedies too

IPRs and Global recognitionIPRs are territorial in natureNo single authority or uniform standardsNational systems and interests continue to

preside

Principles of Traditional Management Organizing towards:

Perfect replicability & standardizationEver-increasing scaleIncremental process efficiency

Efficiency + Productivity = Growth

Role of IPRs – game-changer?RoI = Return on InnovationsMaximizes interests; with minimal efforts

Intellectual assets

Key Principles:

Visibility and full exploitation

Internal and external – aggressive pursuit of IP protection

Role of Intellectual assets in business alliances and joint ventures

Intellectual assets …

Key Issues:

Identifying the key geographical areas – for marketing and registration of IPRs

Study the level of innovative behaviour among the competitors; and suppliers

Role of building brand equity

Offshore Collaboration Typically of three types:

Captive entity – wholly owned subsidiary – IP is fully owned; but has other legal implications

Joint venture – a new combined company – IP is based on the Shareholding Agreement○ BOT Model – involves transition risks

Contracting - with a local Supplier – Enforcement with due diligence – e.g., Confidentiality; Parent-subsidiary relations

Determining factors = cost, commitment, control, flexibility and liability models

IP issues in Contracting

Sharing regime + sustained ownership

Disparities in applicable laws & IP rights

Identify, define and document – processes and products

Due diligence & IP Valuation

IP issues …

Enforcement – involves local issues too

Employer-employee relations – framework of trusteeship

Data protection and security

Dispute settlement and arbitral enforcement

Emerging issues Licensing in IPRs

Emerging trends in global supply chain Minimum level of “reasonable control” – as evidenced in

Contracts and practices Raises anti-trust and RTP claims as well

Securitization of IPRs Methods of valuation and their accuracy Procedure of affirming “secured interest”

Liability of Service Providers in E-Commerce Scope and content of “due diligence” Increasing burden on the ISPs to be “IP-Police”

If we do not use IP …