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Professor Prabuddha GanguliCEO

“VISION-IPR”201 Sunview Heights

262 Sher-e-Punjab, Andheri EastMumbai 400 093

[email protected]

Intellectual Property Rights…. A General Introduction

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Key issue : Ownership of Knowledge

versus

IPR plays a decisive rolepganguli©2001

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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 PublicProducer 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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PatentTrademark

Copyright

Design Registration

Trade Secret

Geographical Indications

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TRADEMARK

COPYRIGHT

TRADE SECRETS

IPR TOOLS

SERVICE MARKS

LAYOUT DESIGNS FORINTEGRATED CIRCUITS

ANTI COMPETITIVEPRACTICES 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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GilletteGillette 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 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 Porsche 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 provisionse.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 !!!!

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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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[email protected]

Building Competitive EdgePatents and Designs Registration…… a few case studies

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Anatomy of a PatentTitle, 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 hookto 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 separatethreads 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 mechanismwhich 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

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1856 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; The first electric machines started to appear. At first these were standard machines with a motor strappedon 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.

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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 FryettPayment 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’sFestival 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."

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Shirin Guild vs. Eskandar Ltd and AnotherEnglish 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 Anothercontd……..

• 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 01-1157CONTESSA 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 optionsPosition in the protectedTechnology grid

Idea Feasibility

Ideas demonstrable

Ideas ActionableIdea into product/process

Marketable Products/ProcessesAlignment with market

time

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IP

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Pot

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IP

Market acceptabilityCompetitive sustenance

IPRManagement

Product Lifecycle

Value addition to Organisation & Market

Hi to Low Risk

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IPR Enabled Knowledge Incubation and

Wealth Realisation

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CONCEPTS INNOVATION PROCESS

OUTPUT MARKET

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Record Maintenance & Updating IPR Information

Managing Intellectual Property

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What do we do ?What do we do ?

• Formulate Institutional IPR PolicyFormulate Institutional IPR Policy• Institute Information classification policyInstitute Information classification policy• How do you sign MOUsHow do you sign MOUs• Make all employees aware of the IPR and information Make all employees aware of the IPR and information

classification policiesclassification policies• Users at unit level made aware of issues & responsibilities. Users at unit level made aware of issues & responsibilities.

Manual of best practices.Manual of best practices.• Set up patent information serviceSet up patent information service• Structured annual training and awareness workshopsStructured annual training and awareness workshops• Protection … establish a continuous processProtection … 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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• 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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• 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 .

pganguli©2000-2008

Professor Prabuddha Ganguli

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.

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