Institute of Intellectual Property Research & Development Presentation on Intellectual Property as a Low Investment Growth Mantra Vinod Khurana, Director, IIPRD 19’th June’08

Agenda Introduction to Intellectual Property Scope of Software Patents in Indian Patent System Scope of growth for Corporates through IP Background of the Institute & In-house Law Firm Services Offered by the Institute along with Law Firm

Introduction to Intellectual Property

Scope of Software Patents in Indian Patent System

Scope of growth for Corporates through IP

Background of the Institute & In-house Law Firm

Services Offered by the Institute along with Law Firm

Introduction to Intellectual Property Intellectual Property Rights (IPR) is a collection of rights that are granted for any mental work or creation that involves intellectual inputs. These rights are granted for stipulated period of time giving the owner monopoly in the technology Intellectual Property Profile, specially in India, has undergone sweeping changes in the past. Intellectual Property has now become a core area for the growth of any corporate. With the growth in International trade and globalization of economic activities, the scope and definition of Intellectual Property is expanding internationally.

Intellectual Property Rights (IPR) is a collection of rights that are granted for any mental work or creation that involves intellectual inputs.

These rights are granted for stipulated period of time giving the owner monopoly in the technology

Intellectual Property Profile, specially in India, has undergone sweeping changes in the past. Intellectual Property has now become a core area for the growth of any corporate.

With the growth in International trade and globalization of economic activities, the scope and definition of Intellectual Property is expanding internationally.

Indian Patent Act, 1970 Some Post 2005 Definitions Sec. 2(j) Invention Any new product or process Involves an Inventive Step Capable of Industrial Application Sec. 2(ja) Inventive Step-Feature involving Technical advancement; or Economic significance; or Combination of above and makes it non obvious to a person skilled in the art

Some Post 2005 Definitions

Sec. 2(j) Invention

Any new product or process

Involves an Inventive Step

Capable of Industrial Application

Sec. 2(ja) Inventive Step-Feature involving

Technical advancement; or

Economic significance; or

Combination of above

and makes it non obvious to a person skilled in the art

Software Patents in India Section 3(k): An invention pertaining to a mathematical or business model or a computer programme per se is not patentable. What makes a software invention patentable in India Inventions showing technical effect Giving a tangible result Incorporating and/or impacting hardware elements Should have a specific limitation Improving properties of hardware elements (increasing processor speed, decreasing processing time, lower memory utilization) Examples of what applications are protectable: Embedded Systems Firmware based application Applications impacting hardware element (s) in a technical manner

Section 3(k): An invention pertaining to a mathematical or business model or a computer programme per se is not patentable.

What makes a software invention patentable in India

Inventions showing technical effect

Giving a tangible result

Incorporating and/or impacting hardware elements

Should have a specific limitation

Improving properties of hardware elements (increasing processor speed, decreasing processing time, lower memory utilization)

Examples of what applications are protectable:

Embedded Systems

Firmware based application

Applications impacting hardware element (s) in a technical manner

Scope of Copyrights in Software Domain Copyrights are given only for particular expression of an idea and not the idea itself. Copyrights can prevent copying of the code having a set of instructions. Software copyright can protect: Set of instructions Tables, Compilations including computer databases by simply recording the program on a tangible medium such as ROM, Magnetic tape, Diskette Requirements for Registration of Copyright office Application on Form IV Portions of the software (Specially the first and last few pages) Sum of Rs. 10 per work of protection

Copyrights are given only for particular expression of an idea and not the idea itself.

Copyrights can prevent copying of the code having a set of instructions.

Software copyright can protect:

Set of instructions

Tables, Compilations including computer databases

by simply recording the program on a tangible medium such as ROM, Magnetic tape, Diskette

Requirements for Registration of Copyright office

Application on Form IV

Portions of the software (Specially the first and last few pages)

Sum of Rs. 10 per work of protection

Copyright vs. Patents Disadvantages of a protecting Software as a Copyright Prevents only direct copying not different embodiments of carrying out the same methods and systems. Independent recreation of the set of instruction does not constitute infringement. Patents are much more effective in preventing infringement and gaining monopoly for the software system and/or method. Disadvantages of protecting Software as Patent Higher costs involved and long prosecution time May get tough to attain in some designated countries In spite of higher costs involved, it is highly recommended to get the software patented to ensure that all implementation and embodiments of the invention is secured from infringement.

Disadvantages of a protecting Software as a Copyright

Prevents only direct copying not different embodiments of carrying out the same methods and systems.

Independent recreation of the set of instruction does not constitute infringement.

Patents are much more effective in preventing infringement and gaining monopoly for the software system and/or method.

Disadvantages of protecting Software as Patent

Higher costs involved and long prosecution time

May get tough to attain in some designated countries

In spite of higher costs involved, it is highly recommended to get the software patented to ensure that all implementation and embodiments of the invention is secured from infringement.

Legal Focus Areas Patents Patent Application Preparation Worldwide Patent Filing, registration, and renewal Patent Prosecution Search-Mapping (Patentability Searches, Infringement Analysis, Invalidation, FTO) Patent Strategy Development Landscaping Patent Portfolio Management Patent Valuation, Licensing, and Commercialization IP Audit and Due-Diligence Litigation Support IP Cell Creation And Intellectual Property Manual Development

Patents

Patent Application Preparation

Worldwide Patent Filing, registration, and renewal

Patent Prosecution

Search-Mapping (Patentability Searches, Infringement Analysis, Invalidation, FTO)

Patent Strategy Development

Landscaping

Patent Portfolio Management

Patent Valuation, Licensing, and Commercialization

IP Audit and Due-Diligence

Litigation Support

IP Cell Creation And Intellectual Property Manual Development

IIPRD Alliances International Alliances European Patent Office D Young & Co. Fulbright & Jaworski LLP CRA International, Inc. Ladas & Parry Sughrue Mion, PLLC Henkel, Feiler & Hanzel..among others Indian Alliances Technology Information Forecasting & Assessment Council Council of Scientific & Industrial Research

International Alliances

European Patent Office

D Young & Co.

Fulbright & Jaworski LLP

CRA International, Inc.

Ladas & Parry

Sughrue Mion, PLLC

Henkel, Feiler & Hanzel..among others

Indian Alliances

Technology Information Forecasting & Assessment Council

Council of Scientific & Industrial Research

Key Differentiators End-to-End IP Services High Level of Client Orientation High Level of Technical and Legal Expertise of the Team (Team Selected from Premier Colleges in India) Team of Patent Attorneys/Agents having strong credentials and expertise in Pharmaceutical, Chemical, Biotechnology, Software, Electronics & Telecommunications, and Mechanical domains Highly qualified team of CA’s for conducting IP Valuation and IP Audit Exercises

End-to-End IP Services

High Level of Client Orientation

High Level of Technical and Legal Expertise of the Team (Team Selected from Premier Colleges in India)

Team of Patent Attorneys/Agents having strong credentials and expertise in Pharmaceutical, Chemical, Biotechnology, Software, Electronics & Telecommunications, and Mechanical domains

Highly qualified team of CA’s for conducting IP Valuation and IP Audit Exercises

Executive Director Mr. Vinod Khurana Vinod Khurana has been in the field of Business Legal Finance for the last 35 years. Khurana started his practice in Intellectual Property, with focus on Protection and Commercialization of Intellectual Property in late nineties. He has been researching and educating on fighting thefts and frauds of intellectual Properties and white-collar crimes, by practicing a mix of Law, Intellectual Property, Accounting, Ethics and Criminology coupled with his professional qualification being a B.Com, PGDFA, LLB, MBA, AICWA, CFA among other specialization qualifications in Investigation and Commercialization of Intellectual Property. Vinod Khurana is also the Executive Director of the Institute of Intellectual Property Research & Development. Mr. Khurana has been speaking on IP Valuation, Due Diligence and Theft of Intellectual Property at various Industrial Forums, National and International Seminars. Khurana has also undertaken various dedicated Workshops and Seminars for well established corporates such as Wockhardt, Indian Oil Corporation, ITC, TVS Group, CSIR, among many others. Department of Economic Affair, Ministry of Finance, Government of India has also empanelled him for appointment as Special Director on the Board of Sick Industrial Companies.

Mr. Vinod Khurana

Vinod Khurana has been in the field of Business Legal Finance for the last 35 years. Khurana started his practice in Intellectual Property, with focus on Protection and Commercialization of Intellectual Property in late nineties. He has been researching and educating on fighting thefts and frauds of intellectual Properties and white-collar crimes, by practicing a mix of Law, Intellectual Property, Accounting, Ethics and Criminology coupled with his professional qualification being a B.Com, PGDFA, LLB, MBA, AICWA, CFA among other specialization qualifications in Investigation and Commercialization of Intellectual Property.

Vinod Khurana is also the Executive Director of the Institute of Intellectual Property Research & Development. Mr. Khurana has been speaking on IP Valuation, Due Diligence and Theft of Intellectual Property at various Industrial Forums, National and International Seminars. Khurana has also undertaken various dedicated Workshops and Seminars for well established corporates such as Wockhardt, Indian Oil Corporation, ITC, TVS Group, CSIR, among many others. Department of Economic Affair, Ministry of Finance, Government of India has also empanelled him for appointment as Special Director on the Board of Sick Industrial Companies.