Sagacious Research Newsletter-16 Dec-2013
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Sagacious Research Newsletter-16 Dec-2013

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Sagacious Research is an ISO Certified India based Global Patent Research & Analytics firm offering cost effective & multi-lingual Patent Searching, Patent Licensing, Patent Alerts & Watches, Patent ...

Sagacious Research is an ISO Certified India based Global Patent Research & Analytics firm offering cost effective & multi-lingual Patent Searching, Patent Licensing, Patent Alerts & Watches, Patent Drafting, Trademark Searching & Design Searching Services in over 100 countries and in over 16 Asian/European languages.

An ISO 9001:2008 and ISO 27001:2005 Certified Company

70+ Techno-legal Experts | 16+ Languages | 100 Countries | 5, 000+ Projects | 99% Client

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    Sagacious Research Newsletter-16 Dec-2013 Sagacious Research Newsletter-16 Dec-2013 Document Transcript

    • Follow Us at: Vol- 12, Date: 16th December, 2013 SAGACI OUS UPDATES Sagacious Research Announces Pre-launch of Its New Blog Sagacious Research Blog will now be much more interactive and engaging as the company management announces launch of a new blogging platform. The Sagacious team will keep the blog updated with latest and most relevant IP news, expert articles, case studies and whitepapers bearing in mind the interest of whole of the IP fraternity. GENERAL NEWS Benefits of Official Registration of GIs All the producers of a product with a GI tag enjoy exclusive commercial rights to their geographical indications. In India, Karnataka Tops with 32 GIs Karnataka has notched the top slot among all Indian states with 32 GIs (Geographical Indications) according to the Trade Marks & GI Registry attached to the Intellectual Property Office of India. Seven of those are agriculturebased GIs while the rest are of handlooms and handicrafts. Note that GIs are nothing but a sign that is used on a variety of goods/products (whether natural, agricultural or manufactured) that indicates the qualities, reputation or characteristics that are essentially attributable to their place of origin. Benefit from GIs? Since 2003, the Intellectual Property Office received 463 GI applications, of which 195 have been registered. Unfortunately only a handful could enjoy commercial success. There has been problem in creating economic value for Indian GIs largely because people are not aware of how to derive commercial benefit from the GI tag. Then, unlike trademarks, all producers who make their products in the place designated by a geographical indication and whose products share specified qualities enjoy rights over it. Moreover, there have been many instances of 3rd parties registering domains for certain renowned GIs with the intention of extracting money by selling these domain names to the rights holders. All in all, there are several problems which crop up in case of a GI just like with trademarks. Thus, it is advisable that prior to planning entry in the market, GI tag right holders register their GIs as domain names [top level domain names (tLDs) including country coded top level domain names (ccLDs)]. Also, they should be ready to deal with problems of market penetration, the economics of launching products, the multiplicity of labels and © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • mixed notions of quality, and the threatening presence of substitutes and similar products. For that reason, adopting traditional marketing strategies to enhance the distinctiveness and attractiveness of their products is a tested measure. Thus, if right holders issue press releases, publish cautionary notices and advertise the geographical indication, it largely ensures protection of their geographical indication from any kind of third party violation. Moreover, before applying for a GI with patent office, hiring a professional partner who is capable of conducting clearance search of the Register of Geographical Indications and common law searches (including the internet, market surveys, yellow pages, directories, etc.) is recommended. This is to ascertain whether any third party is not already using your geographical indication and if so, to what extent. Also, it is recommended to seek an alerts/watching search services to alert you regarding publishing of a deceptively similar GI (mark) that might be of concern to you. Conclusion: All the producers of a product with a GI tag enjoy exclusive commercial rights to their geographical indications. Yet, if someone else violates their rights, it is possible to initiate an infringement action. To avert such a situation, registration of geographical indication is highly recommended. The certificate of registration is the prima facie evidence of its validity and no further proof of the same is required. Copyright “Best Alternative to Patents” for Software Programs Discover all the advantages of “Copyrighting” over” Patenting” for a Software Until recently, copyright was not regarded as being of much relevance to the software developers/inventors but things have changed drastically. Copyrighting has become an extremely important weapon in preventing piracy of computer software and preventing copying of various useful items to which “art” has been applied. In this article, we will shed some light on using Copyright as a legal option or an alternative to patents, for software programs. © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • Difficulties in Patenting Software Programs Patents often offer a broader IP protection for a software program. However, requirement that the invention must be “new” and “nonobvious” causes the most problems for software patent applications. On the other hand, it aids in analyzing as to whether one should pursue patent or copyright protection for such an invention. Patent protection does not exist until a patent is issued. Generally, a patent grant takes approximately 2 years (or more) from the date of filing a patent application. Additionally, in US, the cost of preparation and prosecution of a software patent application may go up to $6,000-$15,000. Thus, one can clearly see the kind of leverage, copyrighting software gives to the inventor. Advantages of Copyrighting Over Patenting For A Software 1. The set criteria’s for getting a copyright are much less complex.Copyright protection is given on the expression, not the idea, of any original work whether literary, artistic, dramatic, musical, and certain other intellectual works including software programs. Copyright protection comes into being as and when the original work gets recorded in tangible form. However, copyright registration is generally required to obtain damages in an infringement action against one who copies the work. 2. Copyright registration is a relatively simple procedure and does normally require submission of “identifying portions” of a computer program, although “special relief” may be available, for e.g., a program that contains trade secret information. Its other advantages include:   Registration provides prima facie evidence of the facts stated thereon  3. The ability to obtain attorney fees and statutory damages which may be important if one cannot prove economic damages Protection is provided against an alleged subsequent deceitful assignment of rights in the work. The term for a copyright is lengthier as against that of a patent (20 years in most cases) and in most cases, it is also extendable. For e.g., in US, once it exists, for works created after January 1, 1978, copyright, in general, lasts for a period of 70 years from the death of the inventor/creator. In the case of works made for hire, however, protection runs for a period of 95 years from publication or 120 years from its creation, whichever comes first. 4. In US, copyright protection can generally be obtained in approx. 3 months. 5. Copyright infringement, unlike infringement of a patent, if carried out willfully and for purposes of commercial or private financial gain, can be prosecuted as a crime as well as a civil wrong. The maximum penalty depends on the exact nature of the defendants acts. In most egregious cases, there is also provision for imprisonment for up to 5 years. 6. Like patents, copyright is subject to national requirements. However, as most major countries are parties to the Berne and Universal Copyright Conventions (effective since March 1, 1989), copyrights are much more easily enforceable around the world. Conclusion Although, we have stated several advantages of copyrighting over patenting as far as the computer softwares are concerned, the most important factor in deciding whether to seek copyright or patent protection for software is to weigh the degree of difficulty required in obtaining the protection against the scope of protection afforded. And it is always recommended that if your software meets the requirements for patent protection (as it is a significant advance in the domain of software engineering) patent protection shall be pursued. However, if it is not the case, as for most softwares, copyrighting is the best legal and intellectual property protection available. © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • Further guidance can be taken from a professional (such as a patent attorney) who is capable of critically analyzing all the factors in determining the appropriate form of IP protection for software. Exploring The Connection B/w Intellectual Property & Crowdfunding Discover all the advantages of “Copyrighting” over” Patenting” for a Software An inventor may now review the market worth of his invention much before spending any money on its commercialization and securing IP protection for it, thanks to the concept of crowdfunding. It is a promising new way worth exploring to raise funds for both inventors looking to promote a new idea and for backers looking to support new ideas. Some of the websites offering crowdfunding services are:  Kickstarter.com  Peerbackers.com  Indiegogo.com  RocketHub.com  Equitynet.com The process involves posting a project description on the internet and asking for pledges to complete the project. If the minimum amount of pledges is received by a certain deadline, the project is initiated or else abandoned. There are several success stories to tell, however, we would like to specifically enlist a few Kickstarter campaigns, the oldest crowdfunding platform that has raised $40M for 7,500 projects in 2 year time.  The project for manufacturing TikTok watch band mount for iPod nanos needed a minimum of $15,000 to launch and crowdfunding raised $941,718.  Then, +POOL project that began with the goal of cleaning the entire river not only filtered the water it but allowed New Yorkers to swim in clean river water for the first time in 100 years. The project raised $273,114 through Kickstarter to build a filtered, floating swimming pool in the middle of the river. Pros Crowdfunding helps in evaluation of the market value of an invention and a product that will be produced using that. If a project finds investors, to a great extent it is confirmed that the idea/invention or the product is worth exploring and you also get the resources to initiate its production. The best part is that crowdfunding adds a new source of funds to your conventional sources of funds that include yourself, “friends and family”, and angel investors. It makes the “initial consumers” pay you the much needed funds that eventually become your guaranteed customer. They, in turn, get an exciting new product. If the funds aren’t raised, you have a valuable market feedback. Besides that, if crowdfunding is cautiously used, it makes your intellectual property especially your patents pay. You may form a successful startup company, raise investment capital and even earn licensing fees on your invention. Cons The fundamental problem is that often individual artists, startups or small businesses who are involved in crowdfunding do not usually attend to business and legal standards. This casual approach is forms the core of all problems related to crowdfunding. Some of them neglect to pay taxes on contributed funds, others erroneously refer their project as a non-profit without fulfilling (or even applying for) that © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • status through the Internal Revenue Service. Lastly, they may ignore securities laws or compliance with other regulations. Also, most crowdfunded projects, whether focused on arts or technology, involve intellectual property (patent, trademarks or copyrights) and public disclosure of intellectual property can have a significant effect on its legal status. With Patents The America Invents Act has turned America to a “first to file” country and as such whoever files a patent first will have priority. If an entrepreneur disclosed a new technology on a crowdfunding website and someone else filed a patent application before the entrepreneur got around to it, the filer would own the invention. The entrepreneur could litigate ownership based on various legal theories, but the outcome would be much less certain. With Trademarks Similarly, whoever files for a trademark first is presumed to have rights to that mark. A crowdfunded project that discloses a catchy new slogan for which a federal trademark application has not yet been filed is at significant risk of having someone else file an application for that trademark. There also is the risk of ownership of ideas submitted by the public. Most crowdfunding websites permit members of the public to comment on projects that are later included into the project as recommendations. While some websites, including Indiegogo, specifically defines that the project creator owns rights to all submitted comments, other like Kickstarter does not define ownership, leaving the parties to negotiate or litigate an answer if a project becomes highly successful. Thus, a project creator who uses publicly submitted ideas faces the risk that a commenter will protest and create a public relations problem or even litigate ownership. Terms of use for crowdfunding websites rarely mention in any detail the obligation requirements after funds are donated. So when large donors follow up to ensure that donated funds are well spent and feel deceived, there arises a possibility of a class action lawsuit. A Word of Caution Prior to engaging in any crowdfunding project, make sure you read the contract, agreement or terms and conditions to familiarize yourself with all the obligations and requirements. Yet, protecting your novel and inventive idea while your project is posted for the all the world to see is also your own responsibility. So, file a provisional patent application i.e. an inexpensive way to make your invention “patent pending” for 12 months while you are raising money. If your project meets its goals, then you move on to “non-provisional patent application”. If not, then you’ve saved quite a bit of money in legal fees. S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y: Tips for Inventors/Startups Who Wish To Secure IP Protection For Their Inventions in A Low Budget Read: http://bit.ly/IJfQdX Kuwait Achieves Best-ever Rate of Annual Growth in U.S. Patents Among GCC Countries in 2013 Read: http://bit.ly/18QgGPK India: CGPDTM Issues Public Notice With Respect To Patent Renewal Certificates & Related Facilities Read: http://bit.ly/1bJp4NN QUT Patent Database “The Lens” Receives $1.8M Funding From Bill & Melinda Gates Foundation Read: http://bit.ly/197KOss Global Patent Filings See Fastest Growth in 18 Years Read: http://bit.ly/1jaM81S © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • TECHNOLOGY Why Software Patents Are Troubling Silicon Valley Businesses? As we dig deeper, and look for weakness in the US patent system, especially, with respect to the software patents, what surfaces is the problems with the very nature of software patents and not the US patent laws. The Silicon Valley entrepreneurs have been quick to reach to a conclusion that the patent systema lot of flawed, possibly because lately they have been spending in US is their time and resources attempting to mitigate patent and intellectual property risk related to their software inventions. However, as we dig deeper, and look for weakness in the US patent system, especially, with respect to the software patents, what surfaces is the problems with the very nature of software patents and not just the US patent laws. In this regard, the argument put forth by Nathan Myhrvold, President of Intellectual Ventures, a prominent patent licensing firm, is of great value. He brings to notice the flaws in the software patents and argues that, “The US Patent System isn’t broken.” For better understanding this, take the case of pharmaceutical patents. Patents in the pharmaceutical and chemical industries produce considerable net value and work particularly well largely due to the fact that these have well defined boundaries (not only because they have a longer patent term). It is relatively easy to determine what a chemical/biological compound is, and what it is not. Thus, every drug company relies on patents and takes those occasional patent litigation lawsuits as part of the game and do not ever blame the patent system for it. In contrast, it is nearly impossible to determine what the valid boundaries of a software patent are. Moreover, ascertaining the meaning of patent claims of software patents and their scope is quite a task. Also, while the US patent system is as old as 200 years, software became eligible patent subject matter in recent times and since then there has been a flood of such patents at PTO that nothing could have been done to either deny examination of such applications or improvise the examination procedure. Subsequent result is higher litigation rates and a high frequency of appeals against software patents, especially by those technology companies, who have been innovating and applying for patents for a longer period of time, against those who simply copy their work. Some very simple remedies are recommended below, applying which would largely decrease the problems related to software patents Make software patent claims transparent or unambiguous by defining ways to write them and keep record of the same for reference of innovators so that they have all the information on patent boundaries. This includes strong limits on patent “continuation applications” as well, a tactic that is used to keep patent claims away from public eye for extended periods.  Enforcing strong limits against overly abstract claims. At least patent law should prevent software patents from claiming technologies far beyond what was actually disclosed as the patented invention. For this, some subject-matter tests like the “tangible test for patent-eligibility for business method patents” may also be introduced to limit the range of software inventions that can be patented.  Make prior-art searches feasible by including a strong requirement that patents should not be granted on obvious inventions coupled with substantially higher renewal fees.  Discourage renewal of low-value patents thereby reducing the cost of FTO searches Conclusion There is, indeed, a problem of deterioration of patent “quality” and invalid software patents are blocking standards besides creating a lot of legal and financial risks that most companies in Silicon Valley can’t afford. However, not all software patents are bad patents (lacking novelty or obviousness), as the general perception is. So, though patent reform is the need of the hour, the flaws in the patent system are not to be blamed for it completely. In lieu, there is a need to address © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • broader improvements, like in patent notice (that notify the public of the existence of the patent) so that the patent examination is facilitated and takes place on clearer, predictable patent boundaries. That will not only address the problem of the patent litigation “explosion” but would also effectively control it. Massive Blow to HTC – Sale Ban on HTC One in UK on Infringement of Nokia’s Patent In UK, court has banned HTC One, company’s flagship Android handset on account of infringing Nokia’s European patent “024. In our blog article titled “Nokia is on a Suing Spree”, we explored many of the patent wars initiated by Nokia over European Patent number 0998024 and its other patents. HTC emerged as the biggest victim of Nokia’s infringement lawsuits as in past 2 to 3 years; Nokia has filed approx. 50 different breaching claims against HTC in the U.S., UK, Germany, and other parts of Europe. Germany, and other parts of Europe. The rulings for many of these infringement suits are out and Nokia has successfully beaten the Taiwanese smartphone maker in most of these cases. Most recent is Nokia’s win in UK where court has banned HTC One, company’s flagship Android handset. In fact, a number of HTC devices breach the same patent, including the HTC One, One Mini, One Max, 8S and Desire 601. These HTC handsets use a technology patented by Nokia patent ‘024 relating to Broadcom BCM4239, BCM4330, BCM4334, and Qualcomm WR1605 chips. These chips and the allied technology are designed to assist broadcast voice and text messaging used in almost every smartphone that is available in the market today. Also note that Nokia paid more than $1 billion to Qualcomm in royalties since the early 1990s only to later become biggest customer for its chips by entering in a 15Y licensing agreement back in 2008. Similarly, Broadcom Corporation also became Nokia’s proud EDGE partner by supplying advanced single-chip cellular baseband processors and its companion power management unit (PMU) for Nokia’s selected EDGE mobile phones. So, it is quite evident that Nokia had the foresight to accumulate patents related to futuristic technologies. To gather such an insight of pattern of patenting activity in this technology domain, as we have mentioned in one of our other blog article “Nokia vs. Apple: An Epic Patent War B/w Two Tech Giants” , Nokia must have invested in state-of-the-art searches or landscape analysis. The court order would make HTC vulnerable up to March 2014, when it will release a successor to the HTC One. Thus, court has given the company time to appeal its decision till December 6, 2013. And if HTC can’t win its appeal, if it submits one, it’s possible many of its devices will disappear from store shelves up and down the UK. Nokia requested an injunction on October 30, 2013 over EP No. 0998024. And despite of knowing that it is facing a claim for infringement of the Nokia patent, HTC launched HTC One smartphone. S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y: Google Glass Copycat Version In Making, Hints Apple’s Patent on Video Goggles Read: http://bit.ly/1hQMclN Samsung Files New Patent Application with USPTO for Smartphone Eye Scanner Read: http://bit.ly/1aM5HaJ Apple Patents Tech For Curved iOS Device Displays Read: http://bit.ly/19lWhme Equipped With Artificial Intelligence, Robots Might Solve Problems Related To Excessive Copyright Protections Read: http://bit.ly/1dbaxwR JPMorgan Patents Bitcoin-Like Digital Payment System Read: http://bit.ly/IJg7Oi © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • LIFESCIENCES BMS & Medicines Patent Pool Collaborates Over HIV Drug “Atazanavir” BMS has agreed to enter a joint patent licensing program with United Nations-backed Medicines Patent Pool (MPP) and share intellectual property rights of HIV drug, “Atazanavir” (brand name Reyataz) By 2016, there will be approx. 1 M HIV patients who will need second-line AIDS treatment as offered by Bristol-Myers Squibb’s HIV drug, “Atazanavir” (brand name Reyataz). Taking that in serious consideration, BMS has agreed to enter a joint patent licensing program with United Nations-backed Medicines Patent Pool (MPP) and share intellectual property rights of this vital HIV/AIDS drug. The agreement was announced on 12 December, 2013. It will enable generic drug firms around the world to produce Atazanavir’s affordable versions thereby making AIDS treatment widely and easily available in poor countries. The Medicines Patent Pool offers a public-health driven business model that aims to lower the prices of HIV medicines and facilitate the development of better-adapted HIV medicines in developing countries. It was founded in 2010 through the WHO-based financing mechanism UNITAID. Medicines Patent Pool’s Other Agreements:  Back in August 2013, MPP and Roche have entered an agreement to increase access to valganciclovir, a key oral medicine to treat cytomegalovirus (CMV), a viral infection that can cause blindness in people living with HIV.  MPP also collaborated with ViiV Healthcare – a joint venture of GlaxoSmithKline, Pfizer, and Shionogi to facilitate greater availability of key pediatric HIV medicine, abacavir. Patent Pools It is a consortium of at least two companies who have decided to offer a joint license for their patents that are essential to the practice of a defined specification. In simple words, it is a joint licensing program where a number of firms pool all their relevant patents that pertain to a particular technology/specification. Benefits – Patent pools are exemplary in the sense that they unite the members of an otherwise competitive industry to join a common cause to create some resource that is to their collective benefit. The other benefits of patent pools are Helps in the deployment of new technologies to the marketplace and set a market rate for Essential Patents. This encourages licensors to join the program and encourages licensees to obtain license. Thus, it saves time and effort in getting access to some Essential Patents  Helps in integrating complementary technologies and reduce transaction costs for both licensors and licensees thereby removing any uncertainty about the availability of patent licenses and their costs  Besides saving transaction costs for both licensee and patentee, in case of blocking patents, patent pools are possibly the only reasonable method for making the invention available in the public domain.  Patent pools do not completely eliminate risk. However, if patent holders (of other patent pools) and those outside the pool pose threat of a patent infringement lawsuit, being a part of a patent pool does help as all its member share common interests. S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y: FDA Approval for Gilead’s Sofosbuvir Attracts Patent Battle Read: http://bit.ly/18IncIe Post Patent Expiry, US FDA Approves Generic Version of Eli Lilly’s Blockbuster Drug “Cymbalta” Read: http://bit.ly/1dFqb49 EPO Defines Patentability Criteria For Methods Involving Human Embryos Read: http://bit.ly/JxHz2e © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com
    • AB O UT SAGAC I O U S R E S EAR C H Sagacious Research is an ISO Certified India based Global Patent Research & Analytics firm offering cost effective & multi-lingual Patent Searching, Patent Licensing, Patent Alerts & Watches, Patent Drafting, Trademark Searching & Design Searching Services in over 100 countries and in over 16 Asian/European languages. An ISO 9001:2008 and ISO 27001:2005 Certified Company 70+ Techno-legal Experts | 16+ Languages | 100 Countries | 5, 000+ Projects | 99% Client Retention C O NTAC T SAGAC I O U S R E S EAR C H Germany United States Kathrin Reinhardt +49 6107 6383 396 6387 Fairways Drive Longmont, CO-80503 T: (303) 506-4192 F: (803) 831-1899 United Kingdom Aarti Thakral +44 (0) 203287 5098 India (HQ) United States 303-B, Enkay Town Plaza, Block-I, Palam Vihar, Gurgaon-122017, Delhi/NCR, India T: +91 124 4033431 F: +91 11 43850700 Jim Worrell +1 803 526 7267 Australia Web: Steve Johnson +61 3 9028 4017 info@sagaciousresearch.com www.sagaciousresearch.com SAGAC IO U S R E S EAR C H S E RVI C E S Litigation / Licensing Support Services Prosecution/ Strategy Support Services Paralegal Support Other Services Global Trademark Searches I n v a l i d i t y/ Opposition Searches Infringer Identificatio n Patentability / Novelty Searches Patent Landscape Studies Patent Proofreading Patents Mining Claim/EoU Charting FTO/ Clearance Searches Competition/ Technology Watches IDS Preparation Patent Illustrations/ Drawings Structure/ Sequence Searches Patent Docketing Claim Construction Reverse Engineering Patent Translations © 2007 - 2013 Sagacious Research. All Rights Reserved. www.sagaciousresearch.com Design Searches Prosecution Watch