Quick Overview of Intellectual PropertySystem (with focus on Patents) by Sagacious Research

Y o u r I N S I G H T i n t o I P

Intellectual PropertyAn Overview

Tarun Kumar BansalDirector, Sagacious Research

March 14, 2009

© 2009 Sagacious Research. All Rights Reserved.

Presentation Plan

� W h a t i s I n t e l l e c t u a l P ro p e r t y

� N e e d o f I n t e l l e c t u a l P ro p e r t y Sy s t e m

� Ty p e s o f I n t e l l e c t u a l P ro p e r t y R i g h t s

� M o re o n Pa t e n t s

� O v e r v i e w

March 14, 2009

� O v e r v i e w

� P a t e n t i n g S t r a t e g y

� P a t e n t i n g P r o c e s s

� S a m p l e C o s t s a n d P a t e n t i n g i n I n d i a

� Pa t e n t s C o n s i d e ra t i o n s fo r n o n - p a t e n t i n g O rg a n i z a t i o n s

� O t h e r U s e s o f Pa t e n t I n fo r m a t i o n

Slide 2


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

March 14, 2009

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

Slide 3


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

Rights Conferred by Owning an

IP

March 14, 2009 Slide 4

house IP

Sell Sell

Mortgage Mortgage

Rent License

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


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

March 14, 2009

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

Slide 5


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 • Utility models

March 14, 2009

• Patents

• Trademarks

• Copyrights

• Geographical Indications

• Industrial Designs

Slide 6

• Utility models

• Plant Breeder’s Rights

• Semiconductors and chip designs

• Trade secrets

• Domain Names


More on PatentsOverview (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

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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)

Slide 7


More on PatentsOverview (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).

March 14, 2009

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

Slide 8


More on PatentsPatenting 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

March 14, 2009

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

Slide 9


More on PatentsPatenting Process

File Provisional / Non-provisional

Patent Application

File complete

patent specification

in Native Country

If filing in ‘Native Country’ Only

Prosecution in Native Country

Pay Maintenance

Fee in Native

Country

Application(s) is/ are Granted

Application(s) is/ are Published


File a PCT

application with

complete patent

specification

File complete

patent specification

in Desired Countries

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

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

Prosecution in each of the Desired Countries

Enter National Phase in Desired

Countries

Prosecution in the National

Phase of each Desired Country

0 Months

12 Months

18 Months

30 Months

Pay Maintenance

Fee in Desired

Countries

Pay Maintenance

Fee in Desired

Countries

Timeline

Op

tio

ns

~36 - 60 Months


More on PatentsNotes

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



More on PatentsIndicative 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.

March 14, 2009

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.

Slide 12


Patent ConsiderationsNon-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/

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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

Slide 13


Other Uses of Patent InformationWh e n & Why con s id e r Pate nt Re s e a rch

80% of technical data published in patents is never published anywhere else

Hence, If you are involved in any of the fol lowing activit ies, you wil l definitely benefit from one

of the professional patent searches:

Activity/ Situation Why a Patent Search

Planning to Innovate Have the right Ideas, Choose the Right Direction

In the Middle of Innovating Know the Latest, Explore the Best Solutions

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In the Middle of Innovating Know the Latest, Explore the Best Solutions

Already Innovated Protect before It is Stolen

Already Protected/ Have a Patent Extract the maximum value

Planning/ Completed a Product Launch Be Sure about IPR Issues

Involved in a Litigation concerning IP Explore Right Evidences to Present

Planning an IP Strategy Get the Facts Right

Planning a Business Strategy Know & watch the competition & technology

Planning Business Expansion Explore right options, Explore intangible assets

Slide 14


Y o u r I N S I G H T i n t o I P

Thank You

Tarun Kumar BansalDirector, Sagacious Research

[email protected]://www.sagaciousresearch.com

Ph. No: +91-931 387 2266