How to develop effective IP Strategy

1. Developing Effective IP
Strategy
IPR in Business
Bindu Sharma
Copyright © 2020 Origiin IP Solutions LLP
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2. IP is a valuable asset
• The creation of IP requires
investment in terms of money,
time and intellect.
• Reduce load on imports and
boost local industry.
• Devise correct & effective
strategies, processes and
policies.

3. The most effective IP strategy is
the one that is aligned well with
the business goals of a company.

4. Five of the most important components
of a successful IP strategy

5. Reducing R&D cycle
• Early entry of innovative products into the market
will results in the products having a competitive
edge as well as longevity in the market.
• Strategically performing a comprehensive prior art
search to assess the research already done and
explore the ways that the existing knowledge can be
utilized for existing products or design.
• Prior art search may reveal existence of IP having
good opportunity to be in-licensed.
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6. Prior art search
• Overview of the way technology
evolved.
• Knowledge in the form of expired
patents or the patents that are not
granted in the jurisdiction where you
want product to be launched, may be
extremely valuable for business.
• In-licensing existing patents may be
helpful to penetrate new markets and
new jurisdictions.

7. Protection of IP
Trademarks, patents, designs, copyrights and
trade-secret are the most important forms of IP.
Trade-secret is another powerful form of IP,
which is not registered but owner of trade-
secret shall take steps to protect it. KFC’s fried
chicken recipe, McDonald's Big Mac Special
Sauce, the recipe of Coca-Cola and Google
AdWords are a few examples of well protected
trade-secrets.
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8. Infringement risk analysis
• Anant Electronics and Futuristic Concepts
Media Ltd were using “Digital Transmission
System” technology to manufacture VCDs using
MPEG 1 coding audio compression/expansion
system in India.
• Philips had a patent protection (Patent no
175971) on this technology in India, of which
these two companies were not aware of, thus
infringing the patent granted to Philips.
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9. Infringement risk analysis
• Delhi High Court ordered both the companies to stop
manufacturing the VCDs that infringed Philip’s “digital
transmission system” patent. Had they performed an
infringement risk analysis before manufacturing and
launching the product, they could have saved a
significant amount of time and money.
• Using technology protected by another company can be
fatal for any business and prior risk assessment is
essential to prevent such undesirable scenarios.

10. Monetization of IP
• Licensing is a method to transfer technology rights
for a particular period of time, whereas assignment
is a permanent transfer of rights.
• Licensing helps innovators to quickly collaborate
with more partners and launch their product in the
market quickly, whereas assignment of IP, usually
worked out at the time of acquisition/merging, is a
way to generate more money in a single transaction.
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11. Monetization of IP
• Sree Chitra Tirunal Institute of
Medical Sciences & Technology
developed the technology for the
manufacture of blood bags
conforming to international quality
requirements.
• They identified Peninsula Polymers
Ltd. for setting up a plant based on
indigenous technology and further
provided equity assistance of up to
25% of the total equity.

12. Monetization of IP
• The production of the blood bags
started for the first time in the country
in 1987 by this company.
• Subsequently, the institute licensed
this technology to a number of
companies in India who not only met
indigenous requirement of blood bags
but also provided the product at an
affordable price and exported their
products to various countries such as
the UK, USA, Germany, Netherlands,
Kenya and Bangladesh.

13. Enforcement of IP
• In Merck vs. Glenmark case, Delhi High court passed
an injunction against Glenmark for manufacturing
the generic drug Sitagliptin and using patented
product of Merck as there was prima facie
infringement of patent rights of Merck.
• Delhi High court passed injunction order against
Glenmark from manufacturing and selling of Zita
and Zitamet. Thereby, patent rights of Merck were
protected and enforced.
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14. VirnetX vs Apple Inc
VirnetX is an internet security software and
technology company.
This company’s patent portfolio includes
American and international patents in areas
such as DNS and network communication.
Since 2010, VirnetX has been involved in
litigation with big companies like Apple,
Cisco, Microsoft, etc. In December 2014,
Microsoft and VirnetX settled patent disputes
over Skype technology for $23 million.
VirnetX, in another law suit with Apple was
awarded $368 million in damages for
FaceTime infringement.

15. Conclusion
An effective IP Strategy, aligned with
business strategy plays a vital role
for growth of a business. Devising
strategy itself is not enough till there
is a process to implement the same
effectively.

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