Manish S Garg Patent Agent and Partner - Franchise India · This is common in the software industry. –Trade secret law is also important because many startups can’t get or afford

Manish S Garg

Patent Agent and Partner, KRISHNA & SAURASTRI ASSOCIATES

A-1013, 10th Floor, ATMA House, Ashram Road, Ahmedabad-380009, Gujarat

Tel : +91-79-26583243 / 26583245 Fax: +91-79-40069134

E-mail : [email protected] Website: www.krishnaandsaurastri.com

1 PRESENTATION AT FRO2013 CONFERENCE ON 16TH JUNE 2103, HOTEL PRIDE, AHMEDABAD

Strategies for Innovating, Creating and Protecting IP

mailto:[email protected]

• Movement from localization to globalization

• FDI

• Changing and emerging global markets

• Differentiation mark

• Market competitiveness

• Licensing and selling opportunities

• Enhanced value to customers

• Mergers and Acquisitions, Joint Ventures

• ROI, especially in high technology-driven areas

PRESENTATION AT FRO2013 CONFERENCE ON 16TH JUNE 2103, HOTEL PRIDE, AHMEDABAD

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• One can avoiding many common blunders and missteps that entrepreneurs make if one has the basic knowledge about IP law

• It’s very easy for an entrepreneur to create an intellectual property ownership mess.


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IP Protection (Assets)

• Patents

• Trade Marks

• Designs

• Copyrights

• Layout designs of integrated circuits

• Confidential Information (Trade Secrets)

• Domain names

4 PRESENTATION AT FRO2013 CONFERENCE ON 16TH JUNE

2103, HOTEL PRIDE, AHMEDABAD

• Entrepreneurs may blur the lines of IP ownership when they work for someone else while working on their new business if they don’t take precautions.

• They may contaminate their new company’s IP with trade secrets or copyrights owned by their former employers.

• They may pick a business or product name that infringes another company’s trademark.

• They may not file for federal registrations for trademarks or service marks on their own great brand names.

• They may hire amateur logo and Web designers, fail to get an IP assignment, pay for IP they don’t legally own and prevent themselves from being able to file for federal copyright registrations and get statutory benefits.


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• Entrepreneurs may fail to take the steps necessary to protect the IP they create for their new ventures.

• Software developers may incorporate open source code that has unfortunate licensing restrictions on derivative works that prevents them from selling their new product.

• Some software entrepreneurs have even landed in jail for failing to understand criminal trade secret statutes.


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• WHY? – Many startups have been sued for trade secret

misappropriation by their employees’ former employers. It is critical for a startup to have a clean house free of unauthorized IP from third parties.

– Many entrepreneurs don’t know what they can take or use from their old jobs because they don’t understand what might be a trade secret. Consequently, they may take and incorporate trade secrets into their new work and create an IP nightmare. This is common in the software industry.

– Trade secret law is also important because many startups can’t get or afford patent protection and so they use trade secret law to protect their key IP assets including software source code and other applications.


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• Types of laws that protect trade secrets

– Varies from country to country

– In India, covered under the common law

• Kind of information protected under trade secret law

– Confidential business, scientific, and technical information • business plans, customer lists, pricing, personnel information,

methods, techniques, and program designs for implementation of software applications, information about the combination of elements in the public, domain, including open source software, design specifications, sources of content, index configurations, algorithms, linking structures, financial information, Intranet and Internet applications


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• SECRET

• PROTECTED: if one wants legal protection, business should take reasonable steps to protect information

• INFORMATION

• Competitive Advantage


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• Marking: marking as “Confidential”

• NDAs: use of non-disclosure agreements with its employees, independent contractors, vendors or third parties before disclosing confidential information; critical in courts as evidence of trade secrets

• Verbal Warnings: Identify and warn people when it considers specific information to be confidential and warn tem not to use or disclose information to other parties

• Physical Restrictions: should only give confidential information to those who need to know it; source code should be locked down and access restricted; access to confidential information should require a password or specific authorization


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• Misappropriation of trade secrets

• Trade secret litigation:

– most likely against former employees, especially if they from a competing company or join a competitor

– More likely if former employer has evidence of suspicious activity including no. of downloads of confidential documents prior to departure or evidence of source code taken


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• Possible damages of trade secret misappropriation

– Preliminary injunction

– Tries to stop continued use or disclosure which may involve stopping the sale or distribution or products or work by specific people

– Seek damages and profits related to trade secrets


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• Synonym to brand names

• Identifies source of goods and/or services from one manufacturer/service provide to another

• What can be trademarked?

– Names, alphabets, words, slogans, logo, pictures, graphics, combination of colors, packaging of goods

– Generic functional marks are not protected

– Must be used in commerce


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• Why trademark? – Good to trademark your company name and

product name (s) to avoid confusion

– Build your brand identity and consumer goodwill

– Protectable trademark helps you to stop others from taking and using your names or similar or identical names

– Distinctiveness from other similar marks necessary

– Prior registration not necessary but gives advantage


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• Searches for proposed business or product name

– Helps increase in likelihood that one can use the trademark

– Helps spot easy, potential infringement issues like existence of registration

• Class specific registration of trademarks (class 1 to 45)

• Procedure of registration is easy, simple

• TM or ®: once filed, you can use TM; once

registered, use ®


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• Infringement of trademark

– When a mark is identical or deceptively similar to the registered mark which are used in course of business

– For liability, the mark must be likely to confuse consumers about the source of goods or services

• Is registration of trademark necessary?

– Yes, registration helps in litigation and effective enforcement of rights


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• Unregistered mark: Passing-off action

• Temporary or permanent injunction

• Damages on loss of profit on sales

• Seizure of entire goods sold in market and stopping the sales


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• Original works of authorship fixed in an tangible medium of expression

• Ideas do not have copyright protection

• No copyright protection for facts, concepts, procedures, methods or systems

• Does not protect titles, names, slogans, or common expressions

• Does not protect information in public domain


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• Literacy

• Artistic

• Musical

• Software

• Dramatic


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• Originality of work essential for copyright registration

• Copyright starts the moment the work is created

• Registration not mandatory but helps in litigation

• Duration of copyright protection

– Generally it is 60 to 70 years from the year in which author dies


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• Rights created by copyright?

– Reproduce the work

– Prepare derivative works based on original work

– Distribute copies to public by sale

– Perform the work

– Display the work


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• Exclusive right given by the patent office to an applicant in exchange for disclosure of his invention

• Territorial right

• Definite period of time: 20 years from date of filing

• Negative right, prohibits others from using, importing or selling patented article

• Can be licensed, assigned


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• Patentability of an invention:

– Novel

– Inventive step/non-obvious

– Industrial utility

• How is patent obtained?

– Filing of patent application at patent office as per the requirements

– Long procedure

– Should satisfy patentability requirements


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• Patent infringement – One who attempts to sale, import an invention covered

by an unexpired patent without permission of patent holder

– Infringement is decided by claims covered in patent

– Remedial measures:

• Damages are compensatory and are not less than reasonable royalty

• Damages based on loss of profits

• Temporary or permanent injunction

• Attorney’s fees


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“Imagination is more important than knowledge”

• Imagination is the ability to stand on an existing foundation of accepted knowledge, and see beyond to the next frontier of discovery…

• IP originates out of the power of imagination.


Intellectual Asset is an enterprise value

• In 1999, global IP Licensing market totaled USD 100 bn.

• In 1982, the proportion between tangible assets-intangible assets was 62: 38. In 2002, this ratio reversed (30: 70).

26 PRESENTATION AT FRO2013 CONFERENCE ON

16TH JUNE 2103, HOTEL PRIDE, AHMEDABAD

IPR Laws in India

• The Patents Act, 1970 (as amended in 2005)

• The Trade Marks Act, 1999

• The Designs Act, 2000

• The Copyright Act, 1957 (as amended in 2013)

• Semiconductor Integrated Circuits Layout Design Act, 2000

• Biological Diversity Act, 2002

27 PRESENTATION AT FRO2013 CONFERENCE ON 16TH JUNE

2103, HOTEL PRIDE, AHMEDABAD


Documents

Manish S Garg Patent Agent and Partner - Franchise India · This is common in the software industry. –Trade secret law is also important because many startups can’t get or afford