Different forms of IP –
An Introduction“All crea(ons resul(ng from human endeavors in various ﬁelds of art, literature, science and technology cons(tute Intellectual Property.” Plant Breeder Patents Rights Trademarks Semiconductor Chipset Designs Intellectual Property Copyright Trade Secrets Industrial Designs Geographical Indications
Patent , Trademarks & Copyrights
- Key features Patentq Protection of ideas that comprise innovative and Trademark qualifying features q Plays an important role in the popularity andq Protection for 20 years success of a brand Copyrightq Protection from reverse q Provides rights to exclude q Protects any literary or engineering others from using the artistic work from illegalq High cost of protection trademark duplication.q Benefits of protection only q Assures the consistent q Protects only non-functional after the grant of a patent quality of goods authorship (but starts from the date q Helps in advertising and q Does not protect ideas, of filing) promoting products methodologies or processes q Is easy to obtain q Can be obtained for all software q Protection for 70 years after the death of the creator
Trademarks – An IntroductionWhat is
a trademark? A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them fromthe goods of its competitors.“Why trademarks? Provides rights to exclude others from using the trademarkq Others cannot use the trademark for their products/servicesq Product/service distinction is maintainedq Brand equity is not dilutedWhy trademarks? The trademark should be distinctive.q The trademark should adequately distinguish the product from other products.q The trademark should not be a generic name of a product/service.q The trademark should not be deceptive.q The trademark should not potentially mislead people about the characteristics of a product/service.
Trademarks – How can we
get them ?How does one obtain trademark protection?Trademark protection can be obtained throughq Registrationq Long-term association (offered in some countries when the trademark has acquired sufficientdistinctiveness and a reputation in the marketplace)First – to – file VS First – to – useq First-to-file → A trademark is granted to the entity who files the trademark application first → Example of countries: Japan, Korea, Benelux, France, Germanyq First-to-use → The trademark is granted to the entity who uses the trademark first → Example of countries: US, India
Patents – An Introductionq They
provide a set of exclusionary rights to the patentee for a limited period of time in exchange for public disclosure of the invention details in a patent application.q The exclusionary rights are an incentive to the applicant to derive economic benefit, whereas the public disclosure encourages research and further developments relating to the patented invention.q These exclusionary rights include: → The right to stop others from making, using, selling, offering for sale, and importing the invention → The patent owner’s right to sell, license, mortgage, assign or transfer these rights to another party
Patents offers purely exclusionary rights…Consider
the example of a patent granted to a company A for a device that isembedded in a laptop computer, which reduces power consumption in the laptop.q Does the patent permit company A to manufacture and start selling the laptop with the embedded device? → Answer: No. For example, a separate patent license may be required if the laptop, or any of its other essential components, is protected by another person’s patents.q Does the patent permit company A to stop laptop manufacturers from using the same technology as that claimed in the patent? → Answer: Yes. Company A can stop laptop manufacturers from unauthorized manufacture, use, selling or importing of laptops that utilize the technology claimed in the patent.
What can be Patented ?Patentable
subject matter should be:q Novel (should not have been disclosed/practiced before)q Non-obvious (should include an inventive step)q Useful (should enable industrial application)The novelty and non-obviousness criteria is judged in light of the prior artq The prior art of a patent application is publicly available information in any form before the filing date of the patent application. Prior art can be of two types:q Patent Prior Art → This includes all patent literature (patent applications, granted patents and expired or discarded patents) published anywhere in the world. → Unpublished applications, which are not publicly available, are not considered prior art.q Non-Patent Prior Art → This includes any publicly available information, including technical journals, websites, products, conferences, etc. → The information may exist in freely available sources or in commercial databases.
What cannot be Patented ?In
general, a non-patentable subject matter includesq Something that is frivolous → For example, a medicine to make a human immortal or a perpetual motion machineq An abstract theory or mathematical formula → For example, the equation of relativity; Newtons laws of motionq A thought or idea → For example, the idea of super-fast space travel that is faster than the speed of lightq Anything available in nature → For example, human genesq Anything that goes against the laws of nature, public interest or morality → For example, a nuclear detonation device, a device to assist burglars
Types of PatentUtility Patentq Protects
inventions by providing useful functionsq Example: A method for reducing noise in telephone callsq Term of 20 years from earliest filing datePlant Patentq Protects new variety of plants (flowers, fruits, shrubs and vines ) produced asexuallyq Example: A new variety of tea plantq Term of 20 years from earliest filing dateDesign Patentq Protects ornamental designs, configurations, the improved decorative appearance or shape of an inventionq Applicable for purely aesthetic reasons (does not protect the functioning of the underlying device)q Example: A novel design of a watchq In some countries, such designs are protected under a different category: Industrial Designs, and not as patentsq Term of 14 years from the date the patent is issuedq Design Patents exist only in the US. Every where else, designs are protected under a different class – Industrial Designs.
What does a Patent look
likePatent application draft Example of a Patentq Abstractq Backgroundq Summary Title: Touchpadq Brief Description of Drawings Handheld Deviceq Detailed Description of Invention Assignee: Apple, Incq Claims (what is actually protected) Patent No. 7,046,230Drawings Click on the icon to viewq Environment of the invention the patentq System elementsq Flowcharts to depict the method steps
Sample Patent: Parts of a
Patent Application First Inventor Patent No. Title of the patent Grant Date Inventors of the patent Assignee (Owner) of the patent Application No. Filing dateDetails of related US Non-Patent patent applications Citations IPC Class Patent Examiner US Class Patent Attorney, Backward Patent Agent or Firm Citations Abstract
Lifecycle of a Patent Does
the patent Is the idea applica/on describe Is the idea patentable all the worth in light of paten/ng? embodiments of the the inven/on? prior art? Dra=ing Patentability Publication Idea and Filing Office Grant or Assessment of Patent Maintenance Conception Patent Action Rejection (optional) Application Applica(on Reduc/on to prac/ce 20 years date Concep/on Filing Publica/on Grant Expiry date date date date date 18 months or less
Why IPR for Start-ups ?
Protection Deter Competitors from copying your ideas Investor RevenueEase of due diligence and Generation via licensing an asset and sales
How to set your IP
strategy?• Where are your customers?• Where are your competitors?• Where do you wish to raise investment?• What opportunities you have in international market?
Key Strategies for IP• Provisional
Patent Application- file to get the earliest priority date and convert into a regular patent within 12 months• PCT application- the patent applicant can delay filing of the patent application to 30 months (31 months in some countries) in 137 countries, without losing advantage relating to the priority date.• Software Patent- Allowed only in US not in India nor Europe• Business Method Patent- Allowed only in US• First to invent only is US , rest of the world- First to file
Acquired Bumptop for 3D
desktop technology patents acquired for its patent porColio Earnings Per patent $11.3 million Earnings Per patent $6.3 million Earnings Per patent $6.6 million Microso= Has to pay $105.75 million to VSs Virnet X for patent infringement NTP Inc. vs. • NTP Inc., sued RIM for patents on wireless e-‐mail technology • Blackberry maker (RIM) pays $612 million to seRle the case