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Your

INSIGHT

into

IP

Intellectual Property

An Overview

Tarun Kumar Bansal
Director, Sagacious Research March 14, 2009
© 2009 Sagacious Research. All Rights Reserved.

Presentation Plan
What is Intellectual Property Need of Intellectual Property System Ty p e s o f I n t e l l e c t u a l P r o p e r t y R i g h t s More on Patents
Overview Patenting Strategy Patenting Process Sample Costs and Patenting in India

Patents Considerations for non-patenting Organizations Other Uses of Patent Information

March 14, 2009

Slide 2
© 2009 Sagacious Research. All Rights Reserved.

What is IP?
Intellectual Property
Any creation (artistic or scientific) that originates from the intellect of a person (and/or a group of persons). Examples : Book, Logo, Drug, Software Code, Jewellery Design, Machine, etc

Intellectual Property Rights
Legal rights granted over Intellectual Property Help originators reap the fruits of their creation / invention commercially Provides monopoly to the originator for a specific period of time Example: Patents, Trademarks, Copyrights, etc

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

What is IP?
Intellectual Property vs. Tangible Property (e.g. House)
Owning an Intellectual Property is similar to owning a house in many respects. This is indicated by the comparison provided in the table below

Rights Conferred by Owning a house Sell Mortgage Rent

Rights Conferred by Owning an IP Sell Mortgage License

Further as lease agreement defines the owned boundary of the house, a document (like patent) defines the legal boundary of the invention

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Need of IP System?
Objective behind IP system
To stimulate innovation for the benefit of the society as a whole. Monopoly is just a by-product of this system

Benefits of IP system
To the originator
Monetary benefits by licensing and/or commercializing their IP Excludes competition to reap fruits of their innovation Acts as an asset to the organization increasing its overall valuation Recognition/ brand image

To the Society
The technologies come to the public domain and the world can enjoy these inventions/creations Reduce effort on re-inventing the wheel and enhance quick technological advancements

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Types of IPR?
Why Different types of IPRs
Innovations differ in their nature, complexity, and utility IP rights need to ensure balance between originator’s and Society’s benefits

Most Common IPRs
• Patents • Trademarks • Copyrights • Geographical Indications • Industrial Designs • • • • • Utility models Plant Breeder’s Rights Semiconductors and chip designs Trade secrets Domain Names

March 14, 2009

Slide 6
© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Overview (1/2) What are patents?
Limited term monopoly rights Granted to an entity (Individual/ Organization) Require detailed public disclosure of inventions

What can be Patented?
Any new or useful process, machine, article of manufacture, composition of matter Any new useful improvement thereof

Patentability Criteria
Novelty, non-obviousness and usefulness

What can not be Patented
Differs from jurisdiction to jurisdiction Broadly anything harmful to mankind (Weapons, etc), discovery of a new property of a known element, Traditional knowledge, scientific principle or the formulation of an abstract theory Idea per se cannot be patented (only implementation of the idea are patentable)
March 14, 2009 Slide 7
© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Overview (2/2) Jurisdiction of Protection
Rights apply only in countries where protection is sought There is no international patent

Term of Protection
Generally, 20 years from the date on which PCT or an application is filed in a given jurisdiction (which ever is earlier). Term calculation may differ from Jurisdiction to Jurisdiction Term may be increased beyond normal term under special circumstances

Rights Conferred by protection
To exclude others from exploiting any commercial benefit (by Selling, Manufacturing, and/or Practicing) from the patented invention Applicable only in jurisdiction of protection and for the specified time Patents do not provide right to the owner to make, use and/or sell their inventions

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Patenting Strategy? When to apply for a patent?
As soon as you have implemented your idea (or are just one year away from it) file for the protection Before applying for a patent you should NOT Disclose your invention publicly (by means of Scientific Papers, Conferences, etc) NOT Share the details of your invention with ANYONE (sign a binding NDA - if unavoidable for business reasons like for obtaining funding, etc) Thoroughly check the patentability (you can conduct a search yourself using free sources available via web – see notes)

Where to file?
Protection is strictly jurisdiction specific (you are protected only where you file) Identify target markets and file for protection - protection in all possible markets ensures that anyone interested in marketing products based on your invention in other countries will have to pay you royalties May use PCT route for additional benefits

Other things to consider
Effective Protection (One patent v. More patents) Explore all possible applications of the Inventions
March 14, 2009 Slide 9
© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Patenting Process
File Provisional / Non-provisional Patent Application Application(s) is/ are Published Application(s) is/ are Granted

If filing in ‘Native Country’ Only

File complete patent specification in Native Country

Prosecution in Native Country

Pay Maintenance Fee in Native Country

If filing in limited Countries e.g. (2/3 countries)

File complete patent specification in Desired Countries File a PCT application with complete patent specification

Prosecution in each of the Desired Countries

Pay Maintenance Fee in Desired Countries

If filing internationally via PCT, (e.g. > 3 countries)

Enter National Phase in Desired Countries

Prosecution in the National Phase of each Desired Country

Pay Maintenance Fee in Desired Countries

Options

0 Months

12 Months

18 Months

30 Months

~36 - 60 Months

Timeline March 14, 2009 Slide 10
© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Notes
Important Notes Provisional application is never published or granted Any disclosure (written/oral) publicly available before the date of filing the provisional is considered as prior art (except in some countries where disclosure by inventors made within 12 months before filing are not considered prior art) You have to file your application in India before filing it in any other country, else obtain a foreign filing permit Term calculation does not start from filing of the provisional application

March 14, 2009

Slide 11
© 2009 Sagacious Research. All Rights Reserved.

More on Patents
Indicative Costs and Patenting in India Indicative Cost of Patenting
India Total cost that an individual might incur in drafting, filing and prosecuting a patent application India is ~ INR 90,000 - INR 1,20,000. Maintaining the patent in force for 20 years costs additional ~INR 70,000. Going International Depends on many factors including number of countries chosen for protection. Typical cost of filing in India, US, and Europe (via PCT route) amounts to ~INR 8,00,000 – 10,00,000.

Govt Support Schemes (India)
Sagacious is currently supporting a scheme (SIP-EIT) that Department of Information Technology, Govt of India has started to provide financial assistance to SMEs and Technology Start-Up units for international patent filing. Total support per application - 50% of the total expenses incurred on international patenting and upto Rs 15 lakhs. Reimbursable Expenditures- All patent processing costs including Attorneys’ Fees, Patent Office filing fees, Examination Fees, Patent Search cost, Additional cost for entering National Phase upto grant/issue.
*Costs incurred after grant (including opposition proceedings, re-examination, etc) cannot be reimbursed under the scheme.

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Patent Considerations
Non-patenting Organizations
Patents have made conducting business like walking in a mine field Freedom-to-Operate Checking if the product/service that you plan to commercialize is free from all IP issues is equally important as is protecting your own innovation It is advisable that you DO NOT assume things and seek professional guidance before launching any product/ service to avoid infringing on other’s intellectual property

March 14, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Other Uses of Patent Information
W h e n & W hy c o n s i d e r Pa te n t Re s e a rc h
80% of technical data published in patents is never published anywhere else Hence, If you are involved in any of the following activities, you will definitely benefit from one of the professional patent searches:

Activity/ Situation
Planning to Innovate In the Middle of Innovating Already Innovated Already Protected/ Have a Patent Planning/ Completed a Product Launch Involved in a Litigation concerning IP Planning an IP Strategy Planning a Business Strategy Planning Business Expansion

Why a Patent Search
Have the right Ideas, Choose the Right Direction Know the Latest, Explore the Best Solutions Protect before It is Stolen Extract the maximum value Be Sure about IPR Issues Explore Right Evidences to Present Get the Facts Right Know & watch the competition & technology Explore right options, Explore intangible assets

March 14, 2009

Slide 14
© 2009 Sagacious Research. All Rights Reserved.

Your

INSIGHT

into

IP

Thank You

Tarun Kumar Bansal
Director, Sagacious Research tarun.bansal@sagaciousresearch.com http://www.sagaciousresearch.com Ph. No: +91-931 387 2266