This document summarizes an IP lifecycle management presentation. It discusses various forms of intellectual property including patents, trademarks, copyrights, and trade secrets. It covers topics like ownership of IP in outsourced software development, domain names vs trademarks, design registrations and patents. Case studies on Apple's design patent strategy in lawsuits against Samsung, and on software patent licensing by Ameranth Technologies, are discussed. The presentation also addresses identifying inventions, conducting freedom to operate searches, automating the IP lifecycle, factors in IP due diligence, and patent valuation. Metrics for assessing IP performance are also mentioned.

1. IP Lifecycle Management
TiE Bangalore, April 21st
2016
Arjun Bala – Patent Attorney, CPVA
Managing Partner
Metayage® IP Strategy Consulting LLP

3. How does patent awareness help?

5. Forms of IPR
Trademark
Design
Copyright
Patent
Trade secrets
Intellectual
Property
Rights

6. Case Study – Outsourced software
development (e.g.,FB v/s
Winklevii)
 Who owns the IPRs?
 What IPRs are involved? Know-how, data,
copyrights, or patents? Concept or code?
 Who owns improvements?
 Governed by contract – Confidentiality, non-
compete, ‘Work for hire’, obligation to assign
 Executing an assignment specifying the IP that
is assigned, territory, and duration

7. Case Study – Domain name v/s
company v/s Trademark
 You may register the domain, or even the
company but yet not own the trademark
 One may oppose within 1 month of
publication in the TM journal
 One cannot institute proceedings unless the
trademark is registered

8. Design registrations/patents
Protects the way an article looks, including
– its shape and configuration, as well as
– surface ornamentation applied to the article

9. Summary on Design registrations
 Refers to features of shape, configuration, pattern,
ornamentation applied to an article by an industrial process
 Appeals to and judged solely by the eye
 Specific to an article in a class in which it is registered
 Term – 10 years extendable by another 5 years (14 yrs in US)
 Time for acceptance - 6 months from date of application
 Should be new and not disclosed to the public before filing
 Not applicable to a mere mechanical device action mode or
mechanism or principle of construction of the article

10. Design patent in the US

11. Apple’s Design patent
 The iPhone was introduced on January
9, 2007 and during the introduction,
Steve Jobs stated “Boy have we
patented it.”
 Apple also made it very clear that they
were going to defend the design of the
iPhone.
 Apple filed four original design
applications just four days before the
introduction of the iPhone.
 Apple filed several subsequent
divisional applications.

12. Apple’s design patent strategy
 Apple’s divisional applications
broadened the scope of their
original application by changing
solid lined elements to broken
lined elements.
 The broken lined elements then
became unnecessary, and
therefore a competitor’s product
would only have to include the
solid lined elements for there to
be a finding of infringement.

13. Apple V Samsung – Parent patent
A COMPARISON OF APPLE’S PARENT DESIGN PATENT CLAIM
AND THE SAMSUNG GALAXY S-4G
NO INFRINGEMENT

14. Apple V Samsung – child patent
A COMPARISON OF APPLE’S CHILD DESIGN PATENT
CLAIM
AND THE SAMSUNG GALAXY S-4G
INFRINGEMENT

15. Representation of the article
 Article shown in isolation and features – must be clearly visible
 The name of the article should be such that it is known in the trade
 Figure should be of sufficient scale to visualize all details of features
 No descriptive matter, numerals, dimensions, symbols etc
 Sufficient views, but no sectional views – perspective views ok
 Photographs most preferred, hidden parts should not be shown
 Drawings must be reproducible by photocopying

16. Case Study – Design registration
 Can someone who stole a design register it?
 Possible, since registration can be applied for
by a person ‘claiming to be the proprietor’
 Cancellation possible on grounds of previously
published or registered designs

17. Trade Secrets
 Information that provides owner with a competitive
advantage, and is treated in a way to prevent others from
learning about it
 Protected through contract law or the equitable doctrine of
breach of confidentiality
 Notifying recipients in writing that the information is
proprietary and not to be disclosed without consent
 Enter into NDAs with employees and third parties
 Establish policies & procedures to prevent inadvertent
disclosure in publications, seminars, trade shows etc
 Physical and technological barriers

18. Identifying Invention
 Addressing a long felt need?
 New solution to a problem?
 Unconventional or out of the box?
 Improvement over an existing approach?
 Commercially valuable and useful?

19. What is a Patent?
Grant of an Exclusive right (for a Limited period of time by the Government to
the Patentee) with respect to an Invention, in exchange for full Disclosure, to
exclude others from making, using, or selling the invention.

20. Is my invention patentable?
 Novelty
 Non-obviousness or inventive step
 Utility or Industrial application

21. Patent, keep as secret, or publish?
 Alternative – keep as a trade secret
 NDAs with employees, partners, investors?
 Secrets are hard to keep
 They may be patented by someone else
 Others may reverse engineer
 Publish it for free – is it all about execution ?

22. Freedom to Operate (FTO) search
 A freedom to operate search is typically
conducted before commercially producing a
product or process in a country in order to
avoid potentially expensive patent
infringement litigation in that country. It
shows whether and to what extent a product
or process would overlap existing patents. An
invention can be patentable but still can
infringe a dominating patent.

23. IP Cycle

24. Automation of IP Lifecycle
IP TechMatch
Marketplace
Publish Patent for
Licensing to Market
Negotiate major
deal terms
Patent Licenses
&
Royalty Revenue
Management
Performance
Metrics

25. Why patent in the US?
 Higher valuation of the patent
 Quicker to get a patent grant
 Prestigious for the inventor & the company
 Better chance of patentability
 Robust enforcement system
 Easier to license
 If patenting in the US, then the cost of
patenting in India also is marginal

26. Patenting cycle
Invention
File a
provisional
application
Market or
sell the
invention
File a
complete
specification/
PCT/Conven
tion
12 months
12 months
Market or
sell the
invention
6 months to
few years
Receive an
examination
report
/Office
action
Amendments
or present
arguments
Patent
Grant?NO
YES
Review of
final
application
Issue of
Patent
Certificate
Receive
subsequent
office action
If final office
action received
File RCE or
appeal
Amendments
accepted?
YES
NO
Prior art
search
< 3months with
time extension
upto 6 months

28. Factors in IP Due Diligence
 Ownership
 Risks due to other IPRs (Freedom to operate)
 Validity
 Enforceability
 Valuation
 Complementarity

29. Patent Valuation Gauntlet (CPVA)
 750 factors
 Sources of patent value (internal use, blocking
value, licensing, sale)
 Prosecution analysis (history, estoppel)
 Additional patent value (brand, leapfrog
competition, cross selling/tag along sales)
 Assertion analysis, design around analysis

31. Software patent licensing
 Ameranth Technology Systems Inc - wireless ordering and
payment processing software product
 Patent titled "Information management and synchronous
communications system with menu generation
 Relates to 'computerized menus and reservations for
restaurants and other applications that utilize equipment
with nonstandard graphical formats’
 Patent license agreements with Radiant, Menusoft,
Netwaiter, Brink Software, Savory Mobile, etc
 Patent infringement lawsuits pending against QuikOrder,
OpenTable, Papa John's, Domino's, Pizza Hut etc

32. Patent acquisition – Friendster
 Friendster owned 7 granted patents and 11 pending
applications on social networking
 A method for connecting a first registered user to a
second registered user through other registered
users – search restricted to N degrees of separation
 Sold company and patents to MOL global for $26
million, which then sold just the patents to Facebook
for 700,000 shares before Facebook’s IPO
 After IPO, the shares are worth $140 million

33. Case study – Veveo Technologies
 Vtap search engine and SmartRelevance™
Conversational Platform used by major smartphone
manufacturers for intelligent search, personalization,
and recommendation
 Patent portfolio of 32 issued patents, 60 applications
 Raised $14 million from Norwest Venture Partners,
Matrix and North Bridge Venture Partners
 Partnered with Verizon and licensed patent portfolio
 Acquired by Rovi Corporation in 2014 for $69 million

34. IP performance metrics

35. Qs & As

36. Thank you!
Arjun Bala
Managing Partner
Metayage IP Strategy Consulting LLP
 - http://www.metayage.com
- +91- 9886572283
 - arjun@myipstrategy.com