Prof. Tase and Vijay Tase’s IPR Training Workshops Science, Technology, TIFR, and IPR 02 November, 2007

IPR in national and global context Types of IPR Process of IPR acquisition IP valuation and management Infringement Development of IPR personnel Typical coverage of the IPR workshop for senior managers

IPR in national and global context

Types of IPR

Process of IPR acquisition

IP valuation and management

Infringement

Development of IPR personnel

IPR – the fundamental premises We all work hard and in good faith Most scientific development is ‘building on the past’ Patents for ‘obvious’ inventions would stifle progress No patents means no incentive Must play the IPR game

We all work hard and in good faith

Most scientific development is ‘building on the past’

Patents for ‘obvious’ inventions would stifle progress

No patents means no incentive

Must play the IPR game

1. IPR in National and Global Context

Broad context of IP Changing world Not exactly a ‘friendly neighbourhood’ Need for the awareness of what’s yours Creation of IP for survival and growth

Changing world

Not exactly a ‘friendly neighbourhood’

Need for the awareness of what’s yours

Creation of IP for survival and growth

In 1421, Filippo Brunelleschi received the world's first patent for an invention. He created a method of transporting marble more cheaply via a paddleboat. We have a long way to go… His patent gave him the right to burn any ship borrowing his design for three years.

The largest recipients of patent filings are the patent offices of Japan, the United States of America (USA), China, the ROK and the European Patent Office (EPO). These five offices account for 77% of all patents filed in 2005, (a 2% increase over 2004), representing 74% of all patents granted. With an increase of almost 33% over 2004, the patent office of China became the third recipient of patent filings in 2005. IPR in international news WIPO Report Reveals Changing Geography of Innovation with Highest Patenting Growth Rates in North East Asia WIPO, 20 August, 2007

The MD Speak Mahindra Innovation at low cost: Scorpio: $30M – engg design, $50 Production specific expenses, $40 facilities Integrated Production Management System: $140k v. $2.6m import Bolero: Seat installation system: $30k Italian, $1500 inhouse. So, where’s the IP?

The CEO Speak DNN Money, 27 Aug., 2007

Infringement

IPR and M/A JVs in the News Tata Motors: “The management will expect a return from the R&D just like any other investment. They will get more aggressive about guarding the output of their research ” “ As foreign companies set up their own operations, the local firms are having to spend their own money on R&D” TVS: 12 crores to50 crores in 7 years Bajaj: From under 3Cr to 68 crores within a decade Tata Motors: This is just a start. As more Indian companies build their own products, the litigation will only be on the rise.

STATE OF PATENTING IN INDIA 1992 2500 applications in India 1600 900 Foreign Indian Nationals Nationals Applications in Japan 130,000

1992

2500 applications in India

1600 900

Foreign Indian

Nationals Nationals

STATE OF PATENTING IN INDIA 2003 12000 applications in India 10,000 2,000 Foreign Indian Nationals Nationals Applications in Japan 450,000

2003

12000 applications in India

10,000 2,000

Foreign Indian

Nationals Nationals

IPR in Worldwide Research Organisations National Science Foundation, USA – Policy On Patents CERN, Europe – Policy On Technology Transfer OECD – Turning Science Into Business – Patenting And Licensing At Public Research Organisations Oxford University – Intellectual Property Policy Cornell University – Patent Policy

IPR in Worldwide Research Organisations NASA – 641 (1941)‏ Oxford University – 21 (191)‏ TIFR – 3 (20)‏ CERN – 8 (74)‏ Cornell University – 52 (258)‏ MIT – 3020 (8572)‏ IIT – 82 (267)‏ Mahindra and Mahindra – 1 (25)‏ L&T – 1 (56)‏

COMPANY NO. OF PATENTS Toyota - 99,999+ GM - 11,000 Honda - 97,000+ Renault - 23,000+ Daimler Benz - 7,000+ Land Rover - 2,100+ Volkswagen AG - 16,000+ Porsche AG - 12,000+ General Electric/GE - 25,553 SONY - 20,873 Ford/Ford Global - 8,888 IBM - 99,999+ European Patent office database, Sept. 2007

COMPANY NO. OF PATENTS

Toyota - 99,999+

GM - 11,000

Honda - 97,000+

Renault - 23,000+

Daimler Benz - 7,000+

Land Rover - 2,100+

Volkswagen AG - 16,000+

Porsche AG - 12,000+

General Electric/GE - 25,553

SONY - 20,873

Ford/Ford Global - 8,888

IBM - 99,999+

What do all these numbers mean? Are they ‘technically’ sound? Are they of strategic importance? Do many/most make money? Creates an image Commands respect at the bargaining table Reflects a culture at the ground level It’s a hallmark of global powerhouses

What do all these numbers mean?

Are they ‘technically’ sound?

Are they of strategic importance?

Do many/most make money?

Creates an image

Commands respect at the bargaining table

Reflects a culture at the ground level

It’s a hallmark of global powerhouses

Need for IPR

Essential Panchasheel Innovation Creativity Entrepreneurship IPR Invention Success Goregaon Pattern Ulhasnagar Pattern

What IP can do for you Wealth creation Legitimate ownership Monopoly – market advantage Entry into the big league Bargaining power Talent attraction Collaborations Image of a trustworthy organisation Stay in business and keep others out!

Wealth creation

Legitimate ownership

Monopoly – market advantage

Entry into the big league

Bargaining power

Talent attraction

Collaborations

Image of a trustworthy organisation

Stay in business and keep others out!

No!!! IPR – is it a panacea? Vigilence required IPR or not - people will steal You may not always win (even if you are in the right)‏ IPR costs a lot of money Why bother then?

Why bother then? IPRs are necessary no matter which side of the wall you are on!! Protect your own ideas Let others know your boundaries Modify others’ ideas legitimately Don’t become a trespasser

Need for IPR for nations as a whole

Japanese Industrial Development and IPR From about 1600 for about 250 years the door was closed to the outside world In 1854, when Japan reopened the doors, the science and technology of the West, had surpassed Japan. Japan did not have the power to compete against the advanced Western countries.

Japanese Industrial Development and IPR As the early stage of industrialization, it was necessary to import leading technology from abroad. Japan had to import technology from abroad, for which it was vital to establish an IPR system. 1884, the Trademark Ordinance; 1885 the Patent Ordinance. However, there was the problem that patent rights of foreigners were not recognized.

Sakichi Toyoda – Founder, Toyoya In his lifetime, Toyoda himself acquired 84 patents and 35 utility models. Total No. of patents 99,999+ Japanese Industrial Development and IPR

Soichiro Honda, Founder the Honda Group. Honda himself acquired 115 patents and 359 utility models. Japanese Industrial Development and IPR Total No. of patents 97,000+

Sony, Masaru Ibuka, Co-Founder Sony. Ibuka himself acquired 50 patents and 53 utility models. Japanese Industrial Development and IPR Total No. of patents 20,000+ worldwide

A large number of venture industrialists in Japan used the patent system and, along with developing the companies they established, also caused the Japanese economy to develop. IPR to Economic Development Takahiko KONDO Commissioner Japanese Patent Office November 16, 1999 Tokyo

Infringement

www.peertechnical.net Electronics P.Wasted Intel and AMD 1990s $200,000,000 Mechanical P.Lawsuit Hughes Tool <-- Smith International 1986 $205,000,000 Mechanical P.Lawsuit Haworth <-- Steelcase 1996 $211,000,000 Electronics P.Settlement Intergraph <-- Intel 2002 $300,000,000 Medical P.Lawsuit Cordis/Johnson & Johnson <-- Boston Scientific 2000 ($324,000,000)‏ Software P.Settlement Pitney Bowes <-- HP 2001 $400,000,000 Electronics P.Settlement Litton Industries <-- Honeywell 2001 $420,000,000 Software P.Buyout InterTrust <-- Sony, Philips 2002 $453,000,000 Mechanical P.Buyout SpinBrush Inc. <-- Procter & Gamble 2002 $475,000,000 Electronics P.Settlement Texas Instruments <-- Toshiba 1990 $500,000,000+ Computer P.Lawsuit Digital <-- Intel 1997 $700,000,000 Chemical P.Lawsuit Polaroid <-- Eastman Kodak 1991 $873,000,000 Sports C.License Major League Baseball <-- Fox Television 2002 $2,500,000,000 Technology Legal Action Parties Year Amount

Xerox Corp v. University of Texas. Feb 2002 HP v. Cornell University, 2001 MIT (Boston)/Electronics for Imaging v. A lot of companies - 2002 Institutions in IPR lawsuits Steal this idea: university patent-infringement suits flourish - Update University Business , March, 2002 by Tim Goral

Types of Infringement Valid Steal Direct Infringement Contributory or induced Infringement Vicarious Infringement

Direct Contributory Vicarious It is wholesale reproduction and distribution of ‘protected’ works It occurs when someone knowingly encourages infringing activity When for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts Ignorance no excuse!

Infringement – a tricky situation Many of us work hard and in good faith Most scientific development is ‘building on the past’ Patent monopoly would stifle the development No patents means no incentive Must play the IPR game

Many of us work hard and in good faith

Most scientific development is ‘building on the past’

Patent monopoly would stifle the development

No patents means no incentive

Must play the IPR game

How to deal with infringement?

How to deal with infringement? Offender Defender Identify Your Position

What should you do with the infringer? It’s all about money, not emotions

Don’t be intent on destroying the infringer What should you expect out of an infringement suit? Must work out a solution

How to deal with an offender? Take action at the earliest Do your homework Assess whether you are in the right Make sure notice has been served Offer a way out without compromising your business Study the history of your own firm as well as that of the offender Court of law Deal objectively, not emotionally

Take action at the earliest

Do your homework

Assess whether you are in the right

Make sure notice has been served

Offer a way out without compromising your business

Study the history of your own firm as well as that of the offender

Court of law

Deal objectively, not emotionally

IP Generation and valuation

Resources for Successful IP Generation ‘ Breaking out’ mindset Tools for inventive creativity Interrogator Writing abilities Management’s encouragement (moral and financial)‏

‘ Breaking out’ mindset

Tools for inventive creativity

Interrogator

Writing abilities

What is the value of an IP? Single IP may or may not carry much/any value, a carefully constructed portfolio will normally carry high value Value?

IP competitive strategies B M&M M&M M&M M&M M&M M&M M&M M&M M&M M&M Design Around M&M M&M M&M M&M M&M M&M M&M M&M M&M M&M M&M Build A Fortress Wiggle your way out

Live and let live Forming Strategic Alliances The cross-licensing signaling a new trend, allows the electronics giants to tap each other's vast patent portfolios of basic technologies. Sony, Samsung to share patents