IP Strategy to Promote Innovation and Competitiveness Navtej Saluja Vice President Evalueserve [email_address] Office: +91 124 412 0000 WIPO Inter-regional Forum on the Role of Intellectual Property in the Innovative Economy
Presentation Plan Why IP? What Are the Business Opportunities and Risks? How Does One Prepare an IP Strategy?
IP Plays an Extremely Important Role in Business
Create and Increase Corporate Value
Increase stock price, access to investors, customer growth, human resources
Bajaj Auto, a manufacturer of two wheelers, was awarded the patent right on the ‘digital twin-spark ignition’ (DTSI) technology in July 2005
Sept 2007: Bajaj Auto alleged that the ignition technology used by TVS Motors in TVS 125 ML motorcycle ‘Flame’ infringes on its patent
TVS filed a revocation suit against Bajaj Auto in the IP Appellate Board
TVS filed separate lawsuits in Madras and Bombay high courts against defamation and pre-empting efforts by Bajaj Auto to stall introduction of its ‘Flame’ motorcycle
Case Study: Bajaj Auto vs TVS Motors The Issue
The Madras High Court on February 16, 2008, ruled in favour of Bajaj Auto, and prohibited TVS Motor Company from manufacturing, marketing, selling and exporting automobiles based on the technology claimed in Bajaj’s patent
Following the court’s decision, TVS Motors incurred a production and sales loss of Rs. 1 billion (~ USD 23 million) in litigation, as well as loss of goodwill and decline in share value
Analysing IP Landscape Helps Identify Risks and Opportunities
Identifying patent risks and opportunities are essential for developing a business strategy in today's knowledge economy
Own Patents Competitors’ Patents All Patents Own Products Risk of not fully covering your innovations Risk of competitors designing around your patents Risk from competitors Risk of patent infringement (freedom to operate) Competitors’ Products Opportunity to assert your patents Identifying weaknesses in competitors’ patent portfolio Opportunity for acquiring key patents not held by competitors Competitors’ Patents Patenting around competitors’ patents Assessing competitors’ strengths and weaknesses All Patents White space analysis to identify unexplored areas Assessing competitors’ strengths and weaknesses
Are the innovations completely protected in all relevant jurisdictions?
Innovations should be protected in all those countries, where
The product is likely to be sold
The product is likely to be manufactured
Case example: Chinese copies of Bajaj Pulsar motorcycle could have been prevented if Bajaj had filed and enforced design patents and trademarks in China
Although there is no plan to manufacture/sell a product in some countries, filing patents in these countries can help generate revenue through licensing
Case Study Analysis
Assuming the company sells its cars in India, the US, and Europe, patents should be filed in all these countries.
Patents should be filed in all countries offering cheaper manufacturing capabilities, e.g., China, the Philippines, and Vietnam.
A quick analysis of the patents filed in the domain of ‘engine efficiency’ indicates that the US and Japan are the top two patent-filing countries. Although Japan is not the market for the company, it can still generate licensing revenue by filing patents in Japan.
How easy or difficult is it for my competitors to design around my patents?
Am I allowing my competitors to file patents on improvements in my innovations?
Am I constantly increasing my patent portfolio by filing patents for improvements and new features in my products?
Are my patents prone to invalidation because of poor quality of patent claims and specifications?
Gillette Mach 3 is protected by a strong portfolio of more than 35 patents (including patents on the manufacturing process), which deters competitors from entering the “triple blade razor market”.
Develop taxonomy first to understand the IP landscape Case Study Analysis: Sample Taxonomy Increasing the Efficiency of an Internal Combustion Engine Mechanical Methods Engine Head Engine Block Charging Kits Exhaust Manifold Intake Manifold Valve Design and Valve Control Heat Transfer System Lubrication System Catalyst Crank Assembly Design Engine Head Engine Block Charging Kits Exhaust Manifold Intake Manifold Valve Design and Valve Control Heat Transfer System Lubrication System NCD Crank Assembly Mechatronics Engine Head Engine Block Charging Kits Exhaust Manifold Intake Manifold Valve Design and Valve Control Heat Transfer System Lubrication System ECU Crank Assembly
What risks my products face from others’ patents? Our Products Other Patents Taxonomy No overlapping patent, so NO risk Overlapping Patents Risk of Infringement Consider obtaining license, or invalidation Mechanical Methods Design Mechatronics Crank Assembly Engine Head Lubrication System Charging Kits ECU Intake Manifold Product A 5,124,657 5,324,879 Product B 5,243,940 5,372,833 Product C 6,283,920 Product A 6,335,933
Are my patents being infringed? Our Patents Competitors’ Products Taxonomy Overlapping Products Consider out-licensing or filing lawsuit to assert your patents Mechanical Methods Design Mechatronics Crank Assembly Engine Head Lubrication System Charging Kits ECU Intake Manifold Product X 5,724,251 Product Y 6,143,140 Product Z 5,253,915 Product W 5,111,921
Which areas require R&D and filing patents? Case Study Analysis: Understanding your competitors’ weaknesses The competitors have very few patents in these areas: Opportunity for R&D and filing patents Crowded Area No need to re-invent the wheel NISSAN HONDA MITSUBISHI FORD TOYOTA Valve Design and Valve Control Engine Head Lubricating System Charging Kits NCD Exhaust Manifold ECU Heat Transfer System Intake Manifold Cranking Assembly Ot hers
Evalueserve is a research and analytics company with a global footprint. It has 2500+ employees in India, China, Chile, and Romania .The Intellectual Property Research and Legal Support Services (IPLP) group in the company has 330 people; 20 analysts in China perform patent prior art and analytics work as well as trademark searches and watches in Mandarin, Japanese, and Korean. The IPLP group provides the following services: end-to-end patent preparation and prosecution; prior art searches; patent landscapes; patent valuation; litigation support; patent and trademark docketing; trademark search, filing, and prosecution; competitive intelligence; patent proofreading; legal research.
Additionally, Evalueserve provides custom research and analytics services to a client base of Global 5000 companies, investment banks, hedge funds, private equity firms, law firms, VC firms, and consulting and research firms in financial and investment research, business research, market research, intellectual property, expert network, data analytics and modelling and knowledge technology services. We have 65 client engagement managers in major technology, business, and financial centres worldwide. For more details, please visit www.evalueserve.com
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