“Intellectual property”

By: Tarun

September 22, 2018

© Tarun,2018
 INTELLECTUAL PROPERTY
The term ‘intellectual property’ (IP) refers to property created with the use of human
intellect.
IP refers to all creations of mind which are vested with the status of property because
of the commercial value associated with the intellectual creation. i.e. inventions in all
fields of human endeavor, scientific discoveries, industrial designs for article, literary &
artistic work, symbols etc. used in commerce.

Nature/ characteristics of Intellectual Property:

• Creation of human mind (Intellect)
• Intangible property
• Exclusive rights given by statutes
• Time-bound and Territorial/Jurisdictional
What is Intellectual Property
Right (IPR)?
Intellectual Property Right
 not to be confused with IP
 it is a right vested in the asset, not the asset itself
 e.g.
 an idea / invention is IP, a patent registration is an IPR
 a customer / price list is IP, a right of confidentiality is an IPR
 a secret production method is IP, a right to a trade secret is an IPR
 a particular way of representation is IP, copyright or a design registration is
an IPR
 a brand / trade name is IP, a trade mark registration is an IPR

3
 Intellectual property in India

INDUSTRIAL PROPERTY + COPY RIGHT

PATENTS DESIGNS TRADEMARKS Geographical Indications

Patents Patent Information

& Designs

Trade Marks
Copy Right

Geographical Indications
 INDUSTRIAL PROPERTY

Patents Designs Trade- Geographical

Marks Indications

Inventions any Word Indications of source

relating to modification in Name origin or geography
constructional shape,pattern, Logo
features configuration

e.g. Safety e.g. shape of a e.g. for same Darjeeling tea

Valve, handle or Pressure Cooker Kanchipuram sarees
Mechanism of body portion of “PRESTIGE” KolhapurI chappals
a PRESSURE a pressure “HAWKINS”
COOKER cooker “MAHARAJA”
 ‘Trade Mark’ – Definition under the Trade
Marks Act 1999

Trade mark means, a mark capable of being represented graphically and

which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging
and combination of colures….

"mark" includes a device, brand, heading, label, ticket, name, signature,

word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof;
[S. 2 (1) (zb) Trade Marks Act 1999]

JUST DO IT.
 Notice of Registration

® TM

______ is a
trademark/service SM
mark of _______
 Purpose & functions of a Trademark

• To identify the origin of the product/service.

• To distinguish the product/service of the proprietor

from those of others.

• To guarantee the quality of the product/service, and

• To advertise the product/service.

 Selecting a Mark
Distinctiveness Spectrum

The more distinctive the mark, the greater its level of legal protectability.
Generic marks are not capable of trademark protection. Descriptive marks
are capable of protection only with a showing of secondary meaning.
10
 Product Mark
• A product mark is similar to trademark only, but it is to
identify the products or goods instead of services. Herein the
product is the unique selling feature of the company. Initially,
TM, which states that the mark is not yet registered. Once
they are registered, they have to use ®.
• Examples: Pepsi®, Maggi®, PHILIPS® etc.

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 Service Mark
• This type of trademark is used to identify and
distinguish the services rather than the products.
• Like intangible products , transport, communication
or other utilities such as electricity, water, routine
maintenance or repair work, etc.
• The Service marks have their particular symbol which
is SM and not TM.

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 Collective Mark
A collective mark is owned by a collective, whose
members use the collective mark to identify their
goods and services and to distinguish their goods
and services from those of non-members, and to
indicate membership in the group.
• Examples are like "CA" device is used by the members who fall under Institute of
Chartered Accountants; another example is "CPA" which denotes members of the
Society of Certified Public Accountants.

13
 Certification marks
Certification marks are used to define
"standard" of goods and services.
 Example: Woolmark, which is certified for the
fabrics on clothing, Agmark, and ISI.

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 Shape Marks
To sum up shape trademarks, it has facilitated promotion of
products and emerged into the trademark type after the
technological advancement of graphics and other forms of
animation technology. The graphical representation which is able
to make a difference amongst the products can be shape
marked. An example can be the Galliano liquor bottle.

15
 Pattern Mark
• The general meaning of pattern is a repetition of similar design, so it is a
type of trademark wherein the pattern is able to distinguish the product
and services of one brand from another. These are difficult to be
distinguished and have high chances of infringement with near similar
designs.
• They at times, fail to make a distinction and the registration would not be
accepted unless they have evidence of distinctiveness.

16
 Sound Mark
• The sound graphics that distinguish the
products and services of one from the other.
• The sound logo can comprise musical notes,
words and sound graphics. The first Sound
Mark to be registered in India was Yahoo
yodel followed by Nokia tune.

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 Loss of Rights
• Improper use • Failure to police

• Genericide • Failure to renew

• Non-use • Cancellation

• Improper assignment
or licensing
Benefits of Registration of a trademark

• Registration is prima facie evidence of proprietorship of the

trademark

• It gives the exclusive right to use the trademark in respect of

goods/services; and to take legal action in case of
infringement

• The registered proprietor may assign or license the trademark

as any other property

• The registered proprietor can enjoy the Goodwill associated

with registered trademark forever, if the mark is renewed
Steps for registration of trademark in India

• Select a good trademark

• Apply for registration on appropriate form
with appropriate fee
• Classify your goods & services and specify
them properly
• Apply before appropriate office of the Trade
Marks Registry; and
• Respond to office queries/notices properly
and on time
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 Selecting a good Trademark

Go for a trademark which is-

 Easy to speak & spell (in case of word mark),
 Appealing and easy to remember or recollect.
 invented or coined word, unique monogram, logo or a geometrical device

Don’t go for a trademark -

 Which is not capable of distinguishing your goods or services from those of
others- like one/two digit letters or numerals, common surnames/ names,
words or pictures of the product concerned, etc. …………………………..[Section 9(1)(a)]
 Which refers to character or quality of goods/services concerned, which
indicate geographical origin, which are common to trade,..[Section 9(1) (b) & (c)]
 a deceptive, scandalous or offensive matter or a matter prohibited by law to
be used as a trademark,………………………………………………………………….[Sections 9(2)(3) & 13 ]
 a mark which is same/similar to an already existing trademark,…[Section 11]
 Appropriate form and fee

At present there are many forms prescribed for

filing new applications depending on the nature of
application such as Form TM-1, TM-2, TM-51, TM-52
TM-3, TM-8 etc.

Fee ordinarily Rs.4000/-per class

[In the proposed revised rules there will be only one

form for all types of applications for registration of
trademarks.]
 Steps involved in registration process

Receipt of applications, data

entry & digitization In case of
[at Branch Offices] objections Objections not
Response by waived after
Examination of applications, applicant- Response-
approval by Supervisors, release Consideration of Show Cause
of ERs response Hearing
[centrally at TMR Mumbai] [centralized] [at Branch
Offices]
In case, there are no
objections/objections waived -

Publication in the Trade Marks Objections not

Journal waived-
In case of opposition, Application
opposition proceeding refused
No opposition/opposition [at Branch office]
decided in favor of the
applicant- Appeal may be
Application proceeds to Opposition allowed- made before
registration application refused IPAB,
•
Steps involved in registration process
25
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Got an Inventive Idea?

If you have an invention or

inventive idea
What do you do?

• Publish a Paper • Protect your

• Start invention
Manufacturing • Apply for Patent
Patent
• A patent is a statutory grant by Govt for new inventions conferring certain
monopoly rights on the grantee for a defined period, subject to certain
conditions ie Exclusive rights given to a person in return for a full and complete
disclosure of the invention for which the patent is claimed

• Patent rights are territorial

• Term: 20 years from date of filing
• Aim
– Encourage industrial development
– Encourages complete disclosure
– Prevents duplication
– Focus on commercial relevance
– Prevents exploitation of researchers
– Revenue generation
– Source of technical information
A punkah pulling machine (February 28, 1856)

George Alfred DePenning

What Can Be Patented

 Process or Method
 Machine or Apparatus
 Article of Manufacture
 Composition of Matter
 Chemical Compounds
 Physical Mixtures

 Improvements of Any of the Above

Patentability Criteria

Novel
Novel Industrial utility Non-obviousnessSubject
matter

No prior use/claim/ Capable of

Should be non-obvious to a Subject matter
publication being made or
used in industry person skilled in the art used
& reproduced -Technical advancement
with the same
-Economic significance
characteristics
as many times
as necessary

“Any thing under the sun cannot be patentable”

Novelty
• Novelty mean that the subject matter SHOULD NOT BE
– PUBLISHED IN  ANYWHERE IN THE WORLD PRIOR TO
THE PATENT APPLICANT INVENTING IT
– IN PRIOR PUBLIC KNOWLEDGE OR PRIOR PUBLIC, BUT
NOT NECESSARILY PATENTED OR PUBLISHED
– USE, SALE, MANUFACTURE, & DEVELOPED ANYWHERE
IN THE WORLD
– CLAIMED BEFORE IN A PATENT SPECIFICATION
ANYWHERE IN THE WORLD

A Novel subject is not part of state of the art.

(state of the art comprise product, process, or information
in public domain)
Novelty Search
• Novelty is determined before inventive step (or Non-
obviousness) because the creative contribution of the inventor
can be assessed only by knowing the novel elements of the
invention
• The Novelty Search is conducted to see whether the invention
is anticipated by any prior art
What are Anticipations
Anticipation

Dictionary Meaning:
• A prior action that takes into account
or forestalls a later action
• Visualization of a future event or state

Meaning w.r.t. to Patents:

• Any description of the invention which
destroys the element of novelty of the
invention
 Anticipation criteria to determine novelty

• If it was available publicly before the

priority date
• Planting the flag test
– Prior publication shall have clear and
unmistakable direction to do what
patentee claims to have invented
– Sign post to invention is not enough
– Prior inventor must be clearly shown to
have planted his flag at precise
destination and before the patentee
Doctrine of anticipation to determine novelty
• 35 U.S.C. 102 sets forth the doctrine of anticipation by requiring
novelty of invention.

• Doctrine of anticipation
“A claim is said to be “anticipated” if comparison of the claimed
invention with a prior art reference reveals that each and every
element in the claim under attack is shown or described,
organized, and functioning in substantially the same manner as
in the prior art reference”
 The Non-obviousness Requirement
• Even if the invention demonstrate patentable subject matter,
utility and novelty, the patent will not issue if the invention is
obvious

“Obviousness is the next step in the road to patentability, and a significant

hurdle”
 The Non-obviousness Requirement
 What is obviousness?
“An invention is obvious if the differences between the subject
matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.”

• Not exactly but rather known if one were to combine several

references.

• Obviousness defines predictable and non-unique combination of

what multiple references teach would yield your invention.
 The Non-obviousness Requirement
Example:
When you have invented A+B.
A is known in the prior art, and B is known in the prior art.
Upon looking at A and then looking at B, would someone of
skill in the art consider A+B to be already known?
If the answer is yes, then A+B is obvious.
If the answer is no, then A+B is not obvious.
 Some more rules to determine obviousness

• The differences between the prior art and challenged claims;

• The level of ordinary skill in the field of the pertinent art at the
time of plaintiff’s invention;
• What one possessing that level of skill would have deemed to
be obvious from the prior art reference;
• Objective evidence of obviousness or non-obviousness;

Objective evidence includes: (1) the commercial success of the

invention; (2) whether the invention satisfied a long felt need
in the industry; (3) failure of others to find a solution to the
problem at hand; and (4) unexpected results.
Determining what would have been obvious to a person of
ordinary skill in the art

The decision maker may examine the following factors:

1. Type of problems encountered in the art;

2. Prior art solutions to those problem;
3. Rapidity with which innovations are made;
4. Sophistication of the technology;
5. Educational level of the inventor; and
6. Educational level of active workers in the field.
 Subject Matter
• The patents Act 1970 doesn't define the category of the inventions that
can be patented

• But provides a list of inventions that cannot be patented.

• Idea behind preventing certain inventions from patentability is to prevent

monopoly over inventions which are injurious to health, environment,
morality, national defense & security.

NOT
PATENTABLE
 Brief glace on different types of searches

 Novelty Search

 Patentability Analysis

Freedom to Operate Analysis


Landscape Analysis

Infringement Analysis

Validity/Invalidity Search
 Application for patents
Who can file a patent?
Section 6: Persons entitled to apply for patents

• True and first inventor of the invention

• Assignee of true and first inventor

• Legal Representative of a deceased person

who immediately before his death was entitled
to make such application

Application submitted either alone or jointly with

other person.
 Types of Applications
• Ordinary Applications
• Convention Application
• Patent of Addition Application
• Divisional Applications
• PCT International Phase Application
• PCT National Phase Application
 Documents required for
filing of A Patent Application
1. Application for Grant of Patent in Form 1 in duplicate

2. Complete/Provisional specification in Form 2 in duplicate

3. Statement and Undertaking in Form 3.

4. Power of Attorney in Form 26 (in original) ; (if filed through

attorney)

5. Declaration of Inventor-ship in Form 5

6. Requisite Statutory fees (copy of the Priority cheque / DD).

7. Covering letter- indicating the list of documents

01/01/2021 47
 Contents of Specification
• Title of the invention
• Field of the invention
• Background of the invention (PRIOR ART)
• Object of the invention
• Summary of the invention
• Brief description of drawings, if any
• Detailed description of the invention
• Examples
• Claims- not required in provisional
• Abstract- not required in provisional

01/01/2021 48
 Types of Application
Provisional application
1) Get early priority
2) Not expensive
3) Quick
4) Title/Description
5) No claims
6) Cannot be filed in case of conventional/PCT/Divisional
application
7) Filing provisional application is an optional but an advisable step
 Types of Application
Complete specifications
1) Where an application for a patent is accompanied by
a provisional specification, a complete specification
shall be filed within twelve months from the date of
filing of the application,. E.g.

Example
Provisional application: 01-12-2008
Complete specification: 01-12-2009
 Types of Application
Section 10: Contents of specifications

1) Every specification shall start with a title sufficiently indicating subject

matter.

2) Drawings

3) Model or sample illustrating the invention but such model or sample

shall not be deemed to form part of the specification
 Types of Application
Section 10: Contents of specifications (contd.)

4) Every complete specification shall—

i. fully and particularly describe the invention and its operation or
use and the method by which it is to be performed;
ii. disclose the best method of performing the invention which is
known to the applicant and for which he is entitled to claim
protection; and
iii. end with a claim or claims defining the scope of the invention
for which protection is claimed;
iv. be accompanied by an abstract to provide technical
information on the invention.
Stages from filing to grant of a
patent
 STAGES - FILING TO GRANT OF PATENT
FILING OF APPLICATION • IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS
PROVNL. / COMPLETE

PUBLICATION OF APPLICATION • PROMPTLY AFTER 18 MONTHS FROM P.D.

REQUEST FOR EXAMINATION • WITHIN 48 MONTHS FROM F.D.

EXAMINATION-ISSUE OF FER 3rd Party Representation

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS
GRANT OF PATENT
OPPOSITION
• WITHIN 12 MONTHS
Decision of
Controller

Appeal
Revocation/Amendment
Appellate Board
 Publication and Examination
Section 11 A: Publication of Applications

1) No application shall be available to the public till 18

months of date of priority or date of filing whichever is
earlier. MONTHS

2) Applicant may request the controller for early using

appropriate form and fees. The controller shall publish
such application as soon as possible.

Section 11 B: Request for examination

1) Patent applications will not be examined unless requested MONTHS

in a prescribed manner
 Publication and Examination
Rule 24-B: Examination of application

1) The request for examination of divisional application shall be made within

48 months from the date of filing of the application or from the date of
priority of the first mentioned application or within 6 months from the date
of filing of the further application, whichever is later.
2) Controller shall refer document to Examiner within 1 month from date of
publication or date of receiving the request for examination, which ever is
earlier.
3) Examiner shall prepare report in one month but not exceeding 3 months
from date of reference of application to him by Controller.
 Publication and Examination
Rule 24-B: Examination of application (contd.)

4) The period within which the Controller shall dispose off the report of the
examiner shall ordinarily be one month from the date of the receipt of the
such report by the Controller.

5) First Examination Report (FER) along with application and specification is

sent to applicant or his agent ordinarily within 6 months from date of
request of examination or within 6 months from date of publication
whichever is later. In case other interested person files the request, an
intimation is sent to such person.

6) Applicant shall comply with the requirement within 12 months from the
date on which first statement of objection was issued. (section 21)
 A PROCEDURE FROM FILING TO
GRANT OF PATENT (Cont.)

GRANT OF PATENT
Rejection of opposition

Decision of Appellate
POST GRANT OPPOSITION
Controller Board

REVOCATION OF PATENT High Court

 IMPORTANT FEES IN DIFFERENT PROCEEDINGS
(Amount in Rupees)

Individual Legal Entity

 Application for Grant of Patent 1000 4000
 Request for Examination of Application 2500 10000
 Request for Publication 2500 10000
 Substitution of Applicant 500 2000
Notice of Opposition 1500 6000
 Restoration of Lapsed Patent 1500 6000
 Renewal Fees (for 20 years) 48000 192000
PS. Professional help Patent Drafting costs around 30000

SKM
 DUTIES OF PATENTEE

• Maintenance of the patent

 Pay renewal fees
 Every year till the end of the term
 Time limit: before end of the preceeding year ( 6 months extn.
Available )
• Working of the patents:
 Inventions are to be worked in India on commercial scale
 Failing which compulsory licence may be issued
Patent Infringement
1. Demand the infringer stop & pay
damages for past infringement
2. Offer a “Royalty”
3. Ignore the infringement or
postpone action
4. File a patent infringement lawsuit
in federal court
 Litigation vs Licensing
If the objective is to stop a
competitor from offering a If the objective is to obtain
product that infringes one’s royalty for the use of one’s
patent. invention.

Alternatives To Litigation
● Litigations are costly, timely, &
disruptive

● Alternative dispute resolutions

(ADR) include Mediation &
Arbitration
 Trade-Related Aspects of Intellectual
Property Rights(TRIPS) in the World
Trade Organization Compliance
• Agreement enhanced the protection and enforcement of IPRs
to the level of solemn international commitment.

• India is a signatory of TRIPs Agreement in the Uruguay Round

agreement of 1995 and hence, the government has initiated action
to bring in the requisite changes.

• In the last few years, India has enacted fully TRIPs-compliant

Trademarks Act, Copyright Act, Designs Registration Act,
Geographical Indications Act and Protection of Layouts for Integrated
Circuits Act.
Basic Facts about WIPO
WIPO’s Mission:
To promote the protection of IP rights
worldwide and extend the benefits
of the international IP system to all
member States

Status: An int’l intergovernmental organization

Member States: 183
Staff: 915 from 94 countries
Treaties Administered: 24
Decisions by: GA, CC, WIPO Conference
Guiding Principles: Transparency, Accountability,
Consensus
INTRODUCTION TO
COPYRIGHT IN INDIA

By: Tarun
 Copyrights

An intellectual property right granted by a government to

the author of an original literary, dramatic, musical,
artistic, or other eligible creative work to an author,
composer etc. (or his assignee) to print, publish and sell
copies of his original work”

Statute-based, no registration necessary

Why Copyright?

 FairPlay: Reward creative efforts. “Thou shall not

steal”

 Exclusiverights for limited

time → Negative right:
prevent copying/reproduction

 Copyrightis necessary →
encourage dissemination of
copyrighted works = public interest
Copyright Subject Matter

The work concerned has to be

 Original
 Work of authorship
 Fixed
What Copyright Protects
Artistic Works
 Original Literary, Dramatic, Musical and Artistic Works
 Cinematograph Films
Photographs
 Sound Recordings
Literary Works
 Novels, poems, short stories
 Books on any subject
 Computer programmes,
tables, computer databases
 Song lyrics
 Copyright Registration - Mandatory?

 No. Automatic Acquisition of

copyright

 Comes into existence- On

Creation

 Certificate of registration -Prima

facie evidence in dispute
relating to ownership.
DURATION AND TERMS OF
COPYRIGHT
Copyright protection lasts for 60-year
from the year following the:

Literary work
Dramatic work
Musical work
Artistic work Death of
Sound Recording Author

Cinematograph work

Date of
Publication
 PERFORMER’S and
BROADCASTER’S RIGHTS
25 Years
• Rights of a performer in a cinematograph film
• Cessation of Rights after Consent
Broadcast:
Communication to the public by any means of:
Wireless diffusion or by wire.
 Instruction for Filing copyright registration form Online:

1.Enter your valid User ID and Password

to login.
2.Click onto NewUser Registration, if you
have not yet registered.
3.Note down User ID and Password for
future use.
4.After login, click on to link “Click for
online Copyright Registration”.
 Instruction for Filing copyright registration form Online:

5.The online “Copyright Registration Form” is to be filled up

in four steps
1.Complete the Form XIV, then press SAVE button to Save
entered details, and press Step 2 to move to Next Step.
2.Fillup the Statement of Particulars, and then press
SAVE button to Save entered details, and press Step 3/4
to move to Next step
3.Fillup the Statement of Further particulars. This form is
applicable for “LITERARY/ DRAMATIC, MUSICAL AND
ARTISTIC” works, and then press SAVE button to Save
entrered details, and press Step 4 to move to Next Step.
4.Make the payment through Internet Payment gateway
 Instruction for Filing copyright registration form Online:

6.After successful submission of the form, Diary Number will be

generated (Please note it for future reference).
7.Please take hard copy(print) of “Acknowledgement Slip” and
“Copyright Registration Report”, and send it by post to
Copyright Division
Department of Industrial Policy & Promotion, Ministry of
Commerce and Industry
Boudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka, New Delhi-110075
Email Address: copyright@nic.in
Telephone No.: 011-25301202
 FEE CAN BE PAID BY POSTAL ODER /DEMAND DRAFT/ONLINE
PAYMENT  PAYABLE TO “REGISTRAR OF COPYRIGHTS, NEW DELHI”:

For a license to republish a Literary, Dramatic, Musical or Artistic

1. Rs. 5,000/- per work
work (Sections 31, 31A,31B* and 32A)
For a license to communicate an any work to the public by Rs. 40,000/- per
2. Broadcast(Section 31(1)(b)) applicant/per sataton
For an application for registration or copyright in a:
(a)Literary, Dramatic, Musical or Artistic work Rs. 500/- per work
3. (b)Provided that in respect of a Literary or Artistic work which is
used or is capable of being used in relation to any goods or Rs. 2,000/- per work
services (Section 45)
For an application for change in particulars of copyright entered in
the Register of Copyrights in respect of a:
(a)Literary, Dramatic, Musical or Artistic work Rs. 200/- per work
4.
(b)Provided that in respect of a literary or Artistic work which is
used or is capable of being used in relation to any goods or services Rs. 1,000/- per work
(Section 45)

5. For an application for registration of Copyright in a Rs. 5,000/- per work

Cinematograph Film (Section 45)
6. For an application for registration of copyright in a Sound
Recording (Section 45) Rs. 2,000/- per work
7. For taking extracts from the indexes (Section 47) Rs. 500/- per work
General Principles for Use

 for the purpose of research or private study,

 for criticism or review,
 for reporting current events,
 in connection with judicial proceeding,
 performance by an amateur club or society if the
performance is given to a non-paying audience, and
 the making of sound recordings of literary, dramatic
or musical works under certain conditions.
Remedies for Copyright
Infringement
Strengthening Copyright, Enhancing the Reach of the Law
Copyright Examples
2Pac – “Me Against The World”
2Pac – “Me Against The World”
Importance of Patent Information in Business
Development

 Advantages of protecting intellectual property

 Intellectual property (IP) rights don't protect ideas or concepts. They protect
genuine business assets that can be vital to your products or services, or the
success and profitability of your business.
 There are many advantages to securing your intellectual property rights. For
example, protecting your IP can help you:
 Enhance the market value of your business - IP can generate income for your
business through licensing, sale or commercialization of protected products or
services. This can, in turn, improve your market share or raise your profits. In case
of sale, merger or acquisition, having registered and protected IP assets can raise
the value of your business.
 Turn ideas into profit-making assets - Ideas on their own have little value.
However, IP can help you to turn ideas into commercially successful products and
services. Licensing your patents or copyright, for example, can lead to a steady
stream of royalties and additional income that can boost your business' bottom
line.
Importance of Patent Information in Business
Development

 Market your business’ products and services - IP is essential in creating an image

for your business. Think trade marks, logos or the design of your products. IP can
help you differentiate your products and services in the market and promote them
to your customers.
 Access or raise finance for your business - You can monetise your IP assets
through sale, licensing or using them as collateral for debt financing. As well as
this, you can use your IP as an advantage when applying for public or government
funding, eg grants, subsidies or loans.
 Enhance export opportunities for your business - IP can increase your
competitiveness in export markets. You can use brands and designs to market
goods and services abroad, seek franchising agreements with overseas
companies, or export your patented products.
 While some IP rights are automatic, others will need formal application and
registration before you can claim them. Read more about the
different types of intellectual property and
the importance of protecting intellectual property.
 Case Study
Importance of Patent Information in Business Development

86
© Tarun,2018
 Journey of Tech-Development and Translation

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IDENTIFY INVENT IMPLEMENT

IP Licensing /Acquisition

Third Valuation
IP Landscape & Patent Party
White-space mapping Filing Engageme Patent Trademark IP
nt/ NDA Infringemen
Portfolio
IP Competitor t watch ,
Ownership Analysis FTO Analysis Copyrights Invalidation
/Commerc Product Opposition
ialisation Industrial©Design
Tarun,2018
Leaflet 87
Clarity -
 What is Landscaping??
IP Landscaping: Research process that creates an overview of the patents that
are pending or in place in a particular area. 

Landscape Analysis: White Space Mapping

Competitive Landscape
 Key players/competitors  Mapping of Existing Patents
 Platform technologies  “Evaluation of White space”
 Potential partners (in- & out-
license)
 Pricing considerations Market
IP
Technology

 Market size
 Trends
 Demand
 Jurisdictions
Avoid reinventing the wheels..........
© Tarun,2018 88
 Strategize-Early on…..
Strategize

 Go-ahead

 Reject/ Abandon

 Work around

 In-license

Early identification and avoidance of potentially

blocking IP rights of others before substantial
investment in R&D, manufacturing, and marketing
89
© Tarun,2018
 WhatWhat
is Freedom-to-Operate (FTO) ??
is Freedom-to-Operate?

 To ensure that your product does not infringe the Intellectual Property (IP)
rights of others.

 Freedom-to-operate searches identify potential patent barriers to the

commercialization of products or technologies.

 Involves searching the claims language of third-party in-force patents

FTO search is a dynamic on-going analysis

90
© Tarun,2018
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Financial Rewards

3 Robust Agreements -Vendor Engagement

4 Clarity on IP Ownership and Commercialization Rights

5 Technology Valuation for Adding Value to IP

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

91
© Tarun,2018
 “IP Portfolio- Medical Devices”
IP Portfolio
Patent
Novel & 1814/DEL/2012
Inventive 4049/DEL/2015
PCT/IB2016/001746 Brand Name

Copyright Trademark
NEOBREATHE™

Package Insert/
Information Leaflet External
Appearance

Trade Secret Confidential Info.&

Know-how Design
Undisclosed Tech
No. 275868
92
© Tarun,2018
 Current Status, limited market release

“So clever! Why didn’t I “I feel like have 2 extra

think of this before!” hands, I need this
In use (limited market release site)
Dr. Manuel Sanchez Luna,
President, The European Union of
Pre-orders today, not 5 months
Neonatal Written sales enquiries later!”
and Perinatal Societies, Spain Dr. Atul Agarwal, MD
District Instructor, NRP, Bareilly
(Customer)

“Pilot has gone well. We’ll

likely need 1500 units –
1 for each birthing center. “I need 2 more
Dr. Rajshree Bajaj
urgently!”
Deputy Director Child Health,
Dr. Gaurav Agarwal,
National Health Mission,
HOD Paediatrics, KOSMOS Hospital,
Madhya Pradesh
Moradabad
(Customer)

“This single device

provides everything
Pediatricians
currently miss in “My JRs in the OT are
resuscitation” loving it!”
Dr. Sandeep Gupta,
Director, Delhi Newborn center, one of Dr. Surender Bisht,
India’s largest NICUs SDN District Hospital, East Delhi
National Level NRP Trainer
(Customer)
© Tarun,2018 94
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Huge Financial

Rewards

3 Robust Agreements -Vendor Engagement

Clarity on IP Ownership and Commercialization

4
Rights

5 Technology Valuation for Striking a Good Deal

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

95
© Tarun,2018
 Aspirin: Strategic IP Protection by Bayer

• Aspirin –Developed by Bayer in 1897

• Drug patented by Bayer in 1899

• Bayer protected the Trademark-Aspirin

• Promoted, heavily advertised Trademark –Built Brand Value

• Patent Expired

• Bayer continued to reap benefit from sales through established

trademark Aspirin
96
© Tarun,2018
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Huge Financial

Rewards

3 Robust Agreements -Vendor Engagement

Clarity on IP Ownership and Commercialization

4
Rights

5 Technology Valuation for Striking a Good Deal

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

97
© Tarun,2018
 Ensuring Confidentiality during Vendor Engagements

Lunar Group, USA

Industrial Design Firm

Uttejana Pvt. Ltd,

UL Group, Bangalore
Bangalore
BCIL
Engineering
Regulatory Consultancy
design/testing

Agreements for contractual engagement drafted to ensure maintenance of:

 IP Ownership
 Inventorship
 Confidentiality
 Prevention of reverse engineering
98
© Tarun,2018
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Huge Financial

Rewards

3 Robust Agreements -Vendor Engagement

Clarity on IP Ownership and Commercialization

4
Rights

5 Technology Valuation for Striking a Good Deal

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

99
© Tarun,2018
 Enabling Ownership Clarity of IP
for Commercialization
Four Collaborators-One Program

Who owns the IP Joint IP Commercialization Issues

Department of Biotechnology

Stanford University, CA IIT, New Delhi AIIMS, New Delhi

19 Technologies
Ownership by One Neutral Body transferred,
Five products
Commercialization rights to BCIL commercially
launched 100
© Tarun,2018
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Huge Financial

Rewards

3 Robust Agreements -Vendor Engagement

Clarity on IP Ownership and Commercialization

4
Rights

5 Technology Valuation for Striking a Good Deal

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

101
© Tarun,2018
 “Technology Valuation” for Realising
Appropriate Deal Value

Technology
An Emergency Medical Device for Cardiac
Patients, developed at AIIMS

Class- III, Technology Intensive device

IP protected in India, Europe, USA, Israel and Australia

Key Assumptions  
Assumption #
Number of Hospitals, who will need device 50,113
Growth in Demand 2%

Average Selling Price(ASP) per device 4000 USD

102
 Valuation contd….

Expected revenue from product sales from 5 year of

Sales: Rs. 373.53 Crores

Licensing fee proposed 3% of the gross sales Rs.

11.20 Crores (Upfront payment and royalty)

Key outcomes

Valuation helped in negotiations backed with

Market Data and Expected Revenue Stream

Very Good Licensing Royalty

© Tarun,2018
Benefits Expected 103
 Case Studies
1 Building and Strengthening IP Portfolio around Product

2 Strategic IP Protection & Brand Building-Huge Financial

Rewards

3 Robust Agreements -Vendor Engagement

Clarity on IP Ownership and Commercialization

4
Rights

5 Technology Valuation for Adding Value to IP

6 BCIL- Providing hand-holding support to Entrepreneurs –SIB

104
© Tarun,2018
Tech-Development and Translation|| Role of BCIL

Solutions
space

BCIL
Drive Strategic
Collaboration

Drafting Contracts/Agreements

Marketing ,
Negotiations
IP Identificatio Revenue
and Post-Transfer
Evaluation Valuation n of Collection and
Technology Monitoring
and Filings and Pricing Potential Disbursal
Transfer
Licensees

Licensing of Technologies 105

© Tarun,2018
 FI device-Role of IP in Entrepreneurial Journey

------------------------------------------------------------------------------------

------------------------------------------------------------------------------------
Consure Medical Entrepreneurial Journey

Marketing Tie-
Patent Filing, ups, IP Watch
Vendor
Engagement • Patents
• Industrial Design
• No Indwelling
Devices for long
• Identifying USP • Trademark •Developed different
term management • Patent Filing around
• Patents Filed product variants
of Stools USP
• USA, Canada
•Market positioning
• Japan, Israel
Patent • FTO found in • Singapore
•Key sales in India ad
Landscape indwelling FI devices USA
• India, Australia
Mapping , • Europe based-NDA • Europe Built IP
•IP Watch
Prior Art Study AND Contract portfolio,
106
© Tarun,2018 FTO Analysis
 FI Entrepreneurial
FI Device-Journey-
Product Role of BCIL
Launching

Product Launch In the presence of Honourable Minister of State for S&T

Shri Y.S. Choudhary and Secretary DBT Dr.K VIjayRaghavan

107
© Tarun,2018
 108
© Tarun,2018
• 1. What is meant by Intellectual Property? How is different from intellectual property rights?
• 2. Why does intellectual property need to be promoted and protected?
• 3. What is a patent? Explain the elements of patentability?
• 4. An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for
a patent. Discuss.
• 5. What are the steps involved in Trademark registration process? Explain with help of a FlowChart.
• 6. What are the steps involved in copyrights registration process? Explain with help of a FlowChart.
• 7. What are the Stages from filing to grant of a patent ? Explain along with Time Deadline involved with the
help of a FlowChat.
• 8. What is a Copyright? Write the steps of Filing copyright registration form Online.
• 9. Discuss the Importance of Patent Information in Business Development.
• 10. write Short note on 1 Litigation 2. Licensing 3 Mediation 4 Arbitration 5 IP Landscaping
6 Anticipations 7 Specifications
tarun.24044@lpu.co.in
© Tarun,2018 110