1. business and industrial

How to Build Prosperity by Protecting Innovations
AIPMA House, Mumbai- December 14, 2012
UNIDO, ICAMT
Background
Dr. Kalyan C. Kankanala was appointed as the National Expert on Intellectual Property by the United
Nations Industrial Development Organisation, ICAMT. As part of the services as the National Expert
on IP, Dr. Kalyan conducted six (6) training and capacity development programmes in IP for different
target groups. One of such programmes conducted, was aimed at providing basic understanding of
Intellectual Property and protection to the members of AIPMA. The programme was conducted on
14th December 2012 for 16 AIPMA members and member SMEs from Mumbai from various
Industries in the plastic sector.
Objectives
The objectives of the programme can be summarised as follows:
·
To give an insight into the value of IP for businesses and basic steps to be taken by plastic;
·
To give an insight into protectability analysis from both legal and business point of view for
plastics inventions/creations;
·
To provide an insight into risks from IP and strategies to manage such risks to minimize
business losses;
·
To give an overview of important steps to be taken for gaining business and financial value
from IP; and
·
To give an insight into licensing options and related business strategies with the help of a
role play.
Approach to Training
A basic presentation on various fundamental aspects on Intellectual property was included for the
benefit of the participants. It was then followed by session on using IP in business. Further,
parameters to be considered while deciding on protecting any IP and process of protecting various
UNIDO ICAMT
Page 1
IPs were discussed. Steps to be taken to avoid IP risks was discussed at length. The program
conlucded with a session on licesning startgey.
Training materials and handouts were distributed among the participants. Participants were
provided access to online IP reading material repositories. Follow up training programs with
the initiative of the departments to advance learning were also proposed.
Programme Schedule
0930-1000 Hours
Registration
1000-1100 Hours
1200-1300 Hours
Using IP in Business - An understanding for
SMEs in
Analysing protectability of patents/ designs
in the light of business goals
Mitigating IP risks and steps to be taken
1300-1400 Hours
Lunch
1400-1500 Hours
Gaining Value from IP
1500-1600 Hours
Making Money from IP - Licensing as a
strategy
1100-1200 Hours
Training Structure
Program Structure for AIPMA
Number of sessions - 5
Mode of Delivery: Oral presentation, videos, exercises and case studies.
Session 1
Using IP in Business - An understanding for SMEs in plastics
Objective: To give an insight into the value of IP for businesses and basic steps to be taken by plastic
SMEs.
Session 2
Analyzing Protectability of Patents/Designs in the light of Business Goals
UNIDO ICAMT
Page 2
Objective: To give an insight into protectability analysis from both legal and business point of view
for plastics inventions/creations.
Session 3
Mitigating IP Risks and Steps to be taken
Objective: To provide an insight into risks from IP and strategies to manage such risks to minimize
business losses.
Session 4
Gaining Value from IP
Objective: To give an overview of important steps to be taken for gaining business and financial
value from IP.
Session 5
Making Money from IP - Licensing as a strategy
Objective: To give an insight into licensing options and related business strategies with the help of a.
Using the following case studies the concept of IPR and its impacts has highlighted.
A. Recognition of the Importance of Intellectual property by a Start-up Business Manager Enterprise S
COMPANY DETAILS
Location: Luxembourg
Business sector: Software and Internet
Activities: Software management systems and web solutions
Number of employees: 7 persons
Annual turnover: 40.000 € (2002), 150.000€ (forecast for 2003)
Enterprise S. is a young start-up company from Luxembourg. Its activities are focused on the
software and the Internet business. It develops, implements and distributes software management
systems in the field of accounting, logistics, process tracking, communication, human resources and
CRM. Enterprise S. also offers web solutions including application provider, web hosting, web and
application development services.
UNIDO ICAMT
Page 3
The owner of Enterprises S. learnt about intellectual property issues by attending seminars and
conferences for future company managers. There he became aware of the value of his intangible
assets and of the importance of protecting them. So he began to seek information about how to best
protect them, by consulting IP experts.
As some IP protection tools require financial resources that a start-up company may not necessarily
have, the company owner finally adopted a 2-level strategy, which consists of using as much as
possible of the free-of-charge protection tools such as copyright and secrecy and of making a cost
benefit analysis in respect to his finance regarding trademark and patent protection. "Why not make
use of the free-of-charge intellectual property rights as they give you a legal tool to defend your
rights in case of infringement by third parties", is one of his principles.
So the company owner protects his know-how by concluding non-disclosure agreements with future
employees, clients and partners before any information is exchanged. He also ensures that all the
company's documents have a confidential notice. Furthermore a copyright notice is placed on all the
documents, software and web pages produced by the company. Finally the registration of his
products' trademarks remains on his list of next things to do.
Being aware of intellectual property issues for his business, the Enterprise S. owner also takes care
to integrate intellectual property in the business plans. He admits that the time it took him to
include IP considerations in his business plans is not wasted as it helps him in his business activities
today.
Regarding intellectual property protection, the company manager has adopted a defensive strategy,
because he does not think that his competitors are going to copy the company's products.
Nevertheless he wants to be able to assert his rights in case a competitor copies him.
Regarding Intellectual property protection, the company manager has adopted a defensive strategy,
because he does not think that his competitors are going to copy the company's products.
Nevertheless he wants to be able to assert his rights in case a competitor copies him.
He also made use of IP as an information source by asking the Luxembourg Technology Watch
Centre for searches on trade marks and patents. But he does not regularly use IP information to
monitor his technological and competitive environment.
Intellectual property issues are managed by him alone. IP questions are dealt with as problems arise
by seeking help from IP experts.
Planning to diversify his business activities, the company owner plans to develop a new innovative
service based on a patented system. An exclusive license agreement has been signed between the
company and the patent holders. During the negotiation of the contract it was agreed to extend
patent protection to more territories, but they missed the deadline of 1 year, which is given to the
patent holder to seek protection in other countries without failing the novelty criteria (the priority
date). As a matter of fact the company now faces the problem that they can be freely copied and
competed in some of their relevant markets.
The company owner considers intellectual property protection as a very important issue for small
high-tech firms as it attracts investors and protects one's intangible assets from competitors.
Case study compiled by the LIIP Project.
UNIDO ICAMT
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B. A Culinary Engineering Company in Zimbabwe - Algorhythm PVT. Limited
Basic Information
Firm: Algorhythm (Private) Limited
Main Product: The Gwatamatic, a digital culinary rig
Location: Harare, Zimbabwe
Business Sector: Culinary engineering
Activities: Design and marketing innovative culinary hardware and software
Business model: A virtual company focusing on development and protection of intellectual property.
Manufacturing is devolved among several sub-contractors.
Raison d’etre
In Zimbabwe, a country of 12 million people, an estimated four million man hours are expended
everyday cooking sadza, the staple food.. Considering the repetitive nature of most types of cooking,
devices that partially or wholly automate cooking could contribute to significant productivity gains.
How it all Began
The Gwatamatic, a fully automatic digital cooking apparatus, started as an idea in the summer of
1985. Consistency was a problem in cookery too. The quality of sadza (the staple food of Southern
Africa) in particular often varied with the mood of the cook.
The Gwatamatic prototype was developed in 1996 and in July 1997 the first pot of sadza came out
and the stage was set for commercialization. However Mr. Gwata realized that it was important to
protect his invention before proceeding any further. Thus he retained a firm of lawyers to assist him
file a patent to protect the invention.
The major claim of his patent is a practical method of cooking based on a unique integration of
hardware, software and philosophy. The hardware unifies various engineering disciplines including
mechanical, chemical, electrical, electronic and civil engineering. The software orchestrates the
various pieces of hardware to implement the desired recipe. The over-arching philosophy around
which both the hardware and software converge is taking human judgment out of the cooking
process to enhance consistency.
After patenting the apparatus the first commercial Gwatamatic rig had a successful maiden run on
13 December 1997.
Intellectual Property Rights
The following intellectual property rights were granted:
Patents
Granted on 25 October 2000 by the African Regional Industrial Property Organization:
No. AP/P/98/01364 having effect in Zimbabwe, Zambia, Uganda, Swaziland, Sudan, Malawi, Lesotho,
Kenya, Ghana, Gambia and Botswana
Granted
on
26
May
1999
No. 98/9224 having effect in South Africa
UNIDO ICAMT
by
the
South
African
Patent
Office:
Page 5
Trade Marks and branding strategy
While the business of Algorhythm is predominantly based on the Gwatamatic cooking apparatus for
now, more product lines are expected to come on stream in due course. Each product line is
expected to have its own brand identity. The Gwatamatic is only the first one. The name Gwatamatic
itself started as a joke. While Mr. Gwata was working on the prototype he told a friend about it, at
which the friend retorted, what are you going to call it then, the Gwatamatic?! It was quite a funny
name at the time and they all laughed. As Mr. Gwata thought more and more of that name, he
realized that it was quite catchy not least because it rhymes with a certain stage in sadza cooking
called “kukwata”. So it was adopted and registered as a brand name. The trademark and the name
of Gwatamatic were granted by the Registrar of Trademarks, Harare, Zimbabwe:
·
No. 733/2001: Algorhythm logo
·
No. 734/2001: The name Gwatamatic
Financial Resources
Mr. Gwata strongly believes that contrary to popular belief, funding is hardly the biggest constraint
confronting entrepreneurs. The quality of the business idea is more the issue. That is if the quality of
the intellectual property is compelling enough, funding is bound to be found.
However the quality of the intellectual property has to be communicated. One way is by
demonstrating the idea in a prototype. The Gwatamatic prototype was too rustic to catch the eye of
investors. It was only a full scale commercial installation that eventually did it.
Up to that point Mr. Gwata had to rely on his own personal savings.
Friends, family and a venture capital company invested in Algorhythm (Private) Limited after they
tasted actual sadza from the first commercial Gwatamatic rig.
A careful choice of business model considerably reduced the capital requirements for Algorhythm
Pvt Ltd. When he founded the company, Mr. Gwata could not afford even a drill press. Fortunately
round about the same time a copy of the Harvard Business Review crossed his desk. The magazine
had a feature on virtual companies using IBM as a case study. In a nutshell it said that IBM made PCs
yet there was no building which could be called the IBM PC factory. All IBM did was design the PC
they wanted and then outsource the manufacture of components. He recognized that is the business
model he needed.
Business Model based on Intellectual Property as the main asset of the company
In a nutshell, a virtual business model is a philosophy that focuses on intellectual property
development and outsources the manufacturing and other business functions. With time the
financial fortunes of Algorhythm improved but it remained pointless investing in factory equipment
because the virtual model continued to work well.
UNIDO ICAMT
Page 6
In essence, therefore, the main asset owned by Algorhythm Pvt Ltd is intellectual property in the
form of engineering designs, both hardware and software designs. Manufacturing is devolved among
several sub-contractors. The overall policy is for Algorhythm to be the only entity with the full “set of
keys”. All subcontractors only get technical drawings relevant to the components they are making.
This helps improve the security of the intellectual property. For example the company that does the
steel cutting gets instructions on where to cut, drill
and bend plates of steel. That is all they do then they pass the cut steel on to another company that
does the welding. All partnerships are standard arms-length engineering supply contracts that start
and end with a purchase order. While there are no formal licenses, good working relationships have
evolved over the years.
The Gwatamatic – main features
The Gwatamatic 2000 is a revolutionary automatic machine for cooking large quantities of sadza(the
staple food of most of Sub-Saharan Africa) to a professional standard consistently. It is patented
technology indigenous to Zimbabwe. It is the only one of its kind in the world.
The Gwatamatic 2000 offers several advantages over the manual method of cooking sadza, which
include:
1. Quality – the product is guaranteed lump free and thoroughly gelatinized.
2. Consistency - the entire recipe is stored in digital code. So the same high professional quality
is reproduced at the push of a button. Its overriding philosophy is to effectively take human
judgment out of sadza cooking.
3. Convenience – large quantities of sadza can be made fast without compromising quality.
Because the machine is automatic, only one operator is required.
4. Hygiene – the machine operates as a closed system from start to finish. Furthermore its wet
components are deliberately designed to facilitate easy washing.
5. Capacity - enough sadza to feed between 200 and 700 people can be made in 45 minutes. A
household size model to feed between 2 and 10 people is expected in due course.
6. Savings – because the machine operates as a closed system, loss of steam is minimal, which
translates to energy savings.
Capacity: up to 400 litres
Standard cooking cycle time: 45 minutes
Power consumption: - impeller at porridge stage: 1.4kW
UNIDO ICAMT
Page 7
·
impeller at terminal stage: 3kW
·
heater maximum (3 phase): 18kW
·
steam can be used in lieu of electric heating
·
meal feeder: 0.35kW
Meal quality - able to use all types of maize meal
Trade Enquiries: Algorhythm Pvt Ltd
P O Box WGT488
Westgate
Harare
Email: [email protected]
The Future
The development of the Gwatamatic has opened the door to the possibility of digitizing all culinary
recipes known to man and more. All cookery recipes are probably related members of a single
ordered system. Cookery could be transformed from a haphazard hit-or-miss art into a precise
logical science. That way when you go to a bookshop you won’t buy a recipe book but a CD. The
protocols on the CD can then be run on a universal cooking apparatus which prepares any dish of
your choice without need for human judgment or skill. The Gwatamatic already does this but for
sadza only.
Just like in the computer industry, culinary hardware and software are expected to evolve into
separate business entities. So in the long term it is expected to split the business of Algorhythm into
hardware and software divisions.
Sadza is a staple food from the Sahara all the way to Cape Town, making a potential market of
almost half a billion people. So exports are likely to provide significant long term growth of the
business. For now the costs of establishing a presence abroad remain a significant barrier.
C. Why is design important? The case of a toymaker
The Indian Toy Industry is dominated by SMEs and micro enterprises even though toy majors such as
Fun School and Mattel are also present. The domestic industry has been in existence for over 50
years and has considerable reach through an extensive distribution network. Innovation in the form
of IP creation has, however, been extremely poor. With generational change occurring in the
industry, businesses have started becoming open to new ideas.
With the liberalization of the economy, since the late 1980s there was a sudden increase in the
number of automobiles being offered to Indian consumers. This, in turn, inspired some toy
manufacturers to start producing plastic miniatures of automobiles being introduced in the market.
Much like MatchBox Cars, these manufacturers faithfully reproduced the shape of every new car
they saw on the road. Over the years a large number of models became available and coupled with
extensive reach their miniatures were soon available across the length and breadth of the country.
UNIDO ICAMT
Page 8
Keeping in mind the low awareness of IP related issues amongst the SME Sector in the country, the
Small Industry Development Organization (SIDO) - the SME Development Agency of the country working under the Ministry of Small Scale Industries had embarked upon a series of workshops and
sensitization programmes on IPR for SMEs. One such workshop was devoted exclusively to the toy
industry. One of the prominent manufacturers of these miniature cars happened to attend this
workshop.
After the workshop, he met some of the Resource Persons and confessed that it was the first time
that he understood the implications of IP to his business. He understood that if a design was
protected then he, as an entrepreneur, could not escape liability for passing off through the defense
of miniaturization. He also understood that he could legally copy the design of certain automobiles
by doing so intelligently. For instance, he could do a design search at the design office and determine
which designs were over 15 years old and hence no longer protected. He could now also assess
which were the designs where protection had not been extended by the company in question
beyond the initial 10 years or such cases where a foreign company had never obtained design
protection in India. This, itself, gave him a substantial number of models to miniaturize.
In addition, as a canny entrepreneur, he approached one of the car manufacturers and presented 10
pieces of the miniature cars to a senior executive with the suggestion that whenever any potential
customer of the car comes for a test drive to the car showroom, his miniature could be offered to
the potential customer as a memento from the automobile company. The automobile company
thought it was a good idea and today offers this toy miniature to all its potential customers opting
for a test drive. In the process, even though the design of the automobile is protected, the fact that
the automobile has acquiesced in the reproduction of its registered design protects the SME
entrepreneur.
Case study compiled by Pankaj Jain, Director (IPR Cell), Ministry of Small Scale Industries,
Government of India (email: [email protected]).
Analysis of Feedback: This Programme helped clarify many doubts about IP, Trade Mark
Registrations, Designs & Trade Secrets etc . It came out clearly that IP can be used in Marketing
especially in Branding. It also created awareness about Costs and efforts involved in doing so. It
became clear that we must clearly weigh Cost - benefits associated with IP.
Over all a lot of queries were raised by audience. The feedback received clearly indicated that it has
created a lot of positive approach towards IP in general in Business. The feedback forms of the
participants is annexed with this report.
UNIDO ICAMT
Page 9
UNIDO ICAMT
Page 10
UNIDO ICAMT
Page 11
List of Participants
UNIDO ICAMT
S. no
1. Mr Prakash Durve
Company & Designation
AVI Global Plast Pvt Ltd
2.
3.
4.
5.
6.
7.
8.
9.
Mitsu Chem
Jyoti Plastic Works Pvt. Ltd.
Jyoti Plastic Works Pvt. Ltd.
Krupa Industries
Maniar Injectoplast Pvt. Ltd.
Modern Manufacturing Co.
Multiplast Polymer Pvt Ltd
Oswin Plastics Pvt. Ltd.
Mr Bhupendra Singh
Ms Priti Desai
Mr Avanish Kuma
Mr Atul Rambhia
Mr Kalpesh Maniar
Mr Vinod Jain
Mr Manoj Gada
Mr Mahendra Bohra
10. Mr Jayesh Rambhia
Premsons Plastics Pvt. Ltd.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
Regent Plast Pvt Ltd
Sica Plastic Machinery Pvt. Ltd.,
Vinit Performance Polymers Pvt Ltd
PG Drive
Imperial Industries
Plastech International
UNIDO ICAMT
UNIDO ICAMT
Brainleague IP services
Brainleague IP services
Mr Kartik Deora
Mr Haren Sanghvi
Mr Hiten Bheda
Bhavesh Khut
Sagar Giridara
Mr Bhavesh Sheth
Dr Kalyan Kankanala
Mr Madhav Karbelkar
Mr Somshekar R
Mr Shantanu Naraian
Page 12
One Day Training on
"Building Prosperity by protecting lnnovations for plastic
Associations and (SMEs),,
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Contact: Mr. Prasad Narayan
—
Tel: 022-67778899 / 8813
—
Email: [email protected]
UNIDO-ICAMT & AIPMA
Announce One Day Training on
“Building Prosperity by Protecting Innovations for Plastic
Associations and (SMEs)”
14th December, 2012 (Friday)
UNIDO ICAMT and AIPMA are jointly conducting a Training Programme on Intellectual
Property Rights titled “Building Prosperity by Protecting Innovations” for Plastic
Associations, small & medium enterprises (SMEs)” in the plastic sector in Mumbai.
The objective behind such an initiative is to build knowledge on Intellectual Property Rights,
its value for businesses in the plastic sector. It will also uncover strategies to mitigate IP risks
faced by SMEs to incentivise innovation, improve competitiveness and build prosperity
through licensing of intellectual assets.
Dr. Kalyan Kankanala, IPR Expert, UNIDO ICAMT, a specialist in intellectual property rights
will conduct the interactive training that will bring to perspective how small businesses can
thrive in an increasingly competitive environment by protecting their intellectual assets that
range from ideas to designs and more. As a practising Expert he will also share experiences
and case studies to demonstrate the advantages of securing intellectual property.
Seminar Title :
& (SMEs)
Date & Time :
Venue
:
Building Prosperity by Protecting Innovations for Plastic Associations
14th December, 2012 (Friday) at 09.30 am to 16.00 pm
AIPMA HOUSE, Plot No – A/52, Road No - 1,
MIDC, Andheri (East), Mumbai - 400 093
Programme Schedule:
09.30 - 10.00 Hrs
Registration and Tea
10.00 - 11.00 Hrs
Using IP in Business - An understanding for SMEs in plastics
11.00 - 12.00 Hrs
Analysing protectability of patents/ designs in the light of business
goals
12.00 - 13.00 Hrs
Mitigating IP risks and steps to be taken
13.00 - 14.00 Hrs
Lunch
14.00 - 15.00 Hrs
Gaining Value from IP
15.00 - 15.15 Hrs
Tea Break
15.00 - 16.00 Hrs
Making Money from IP - Licensing as a strategy
Kindly confirm your participation with names of the participants latest by 10th December
2012
UNIDO ICAMT
Page 13
Course Material - Annexure -1
UNIDO ICAMT
Page 14
13-12-2012
Fundamentals of Intellectual
Property
Dr. Kalyan C. Kankanala
[email protected]
www.brainleague.com
Blog: www.sinapseblog.com
Books: www.kalyankankanala.com
Thursday, December 13, 2012
Highest value
•
•
•
•
•
Land
Building
Gold
Stocks
Ideas
Thursday, December 13, 2012
Species of IP
Introduction
Patents
• Meaning
• Nature and Scope
• Differences
Biodiversity
Integrated
Circuits
Copyrights
Traditional
Knowledge
Trademarks
Trade
Secrets
Thursday, December 13, 2012
Plant
Industrial Geographical
Varieties
Designs
Indications
Thursday, December 13, 2012
1
13-12-2012
Patents
• Subject Matter - Inventions
• Term - 20 years
Requirements
• New
• Useful
• Non obvious
Rights - Use, Make, Sell, Offer for sale and
Import
Thursday, December 13, 2012
Copyrights
•
•
•
•
Idea/Expression Dichotomy
Tangible Form
Originality and Modicum of creativity
Subject matter - Literary, Dramatic, Artistic,
Musical, Cinematographic, Photographic and
Sound Recording works.
• Term - Life plus 60 years
Thursday, December 13, 2012
Rights
•
•
•
•
•
•
Reproduction
Adaptation
Distribution
Derivative work
Public performance
Display.
Thursday, December 13, 2012
Brand Value
•
•
•
•
•
Google - 114, 260
IBM - 86, 383
Apple - 83, 153
Microsoft - 75, 344
Coca cola - 67, 983
Thursday, December 13, 2012
2
13-12-2012
Trademarks
• Subject matter - Representation
• Term - Unlimited
Requirements
• Distinctive
• Deceptive
Thursday, December 13, 2012
Thursday, December 13, 2012
Protection Ladder
•
•
•
•
•
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
Industrial Designs
• Appearance
• New, Original and Ornamental
• Term: 5 years renewable twice
• Domain names
Thursday, December 13, 2012
Thursday, December 13, 2012
3
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Trade Secrets
• Any information
• Perpetual Term
• Requirements
Economic Value
Not known to public
Reasonable measures
Thursday, December 13, 2012
Integrated Circuits
• Subject matter - Semiconductors, Layout
Designs, Topographies of Electronic
Circuits.
• Term - 10 years
• Requirements
Original
Distinct
Not Commercialized
Thursday, December 13, 2012
Geographical Indications
• Geographical origin
• Identify to a place
• Quality, Reputation or Other
Characteristics.
• Term: Unlimited
Thursday, December 13, 2012
Thursday, December 13, 2012
4
13-12-2012
Others
Traditional Knowledge
– Meaning
– Mechanism
Are we violating any IP rights?
• Are there any IP rights in the song?
• If yes, Am I violating those rights?
Biodiversity
– Diversity of biological Resources
Thursday, December 13, 2012
Thursday, December 13, 2012
Protection
•
•
•
•
•
•
Search
Filing
Prosecution
Grant/Registration
Maintenance
Portfolio Management
Thursday, December 13, 2012
Any
Questions, Comments or
Observations?
For more information:
www.sinapseblog.com
www.kalyankankanala.com
www.onlineipcourses.com
Thursday, December 13, 2012
5
13-12-2012
Business value of IP
Using IP in Business
Services for Entertainment Industry
Stop competitors
XXX MAKE A PICTURE
IP Audit and Mining
Increase revenues
Policy and Process set up
Agreement Drafting, Review and
Negotiation
Generating
licensing
revenues
Protection
of IP
Licensing support and negotiation
Merchandizing support
Disputefinancial
resolution
Increasing
value
Strategic alliances
Steps Towards
Revenue Generation
Kalyan C. K.
[email protected]
www.brainleague.com
www.kalyankankanala.com
Business Development
Stop competitors
Services for Entertainment Industry
Patents
Stop Competitors
What can you protect?
XXX MAKE A PICTURE
IP Audit and Mining
Trade Mark Policy and Process set up
Agreement Drafting, Review and
Negotiation
Copyright
Protection of IP
Licensing support and negotiation
Merchandizing support
Design
Dispute resolution
Strategic alliances
1
13-12-2012
Increase Revenues
Prevent loss of business revenue
Cost and effort of
Build new business opportunities
Not so
simple
Protection
Maintenance
Management
Enforcement
Licensing Revenue
How do you
decide?
Revenue through exclusivity
License Revenue
High potential
Highly neglected
Problems in implementation
X invents a plastic bottle opener.
Gets a patent on it but his
distribution network is limited to
Mumbai.
How can he generate revenue from
other places?
2
13-12-2012
Financial value from Intangible assets
In a non-IP savvy company
Business Development
In an IP savvy company
Consumer products
Tangible
Assets
Intangible
Assets
Tangible
Assets
Intangible
Assets
Government tenders
Advertising and marketing campaigns
Example
Plast, a company that makes plastic bags, develops
a machine and a process for making bags
indigenously. The machine is ten times less costly
than its foreign counterpart. It allows the company
to make double the bags when compared to the
existing machines. The process helps in improving
the quality of the products.
Thank You.
Thank You.
For more info: www.sinapseblog.com
Books: www.kalyankankanala.com
What should the company do
to gain business value?
3
13-12-2012
IP Risk Analysis
Kalyan K.
[email protected]
Url: www.brainleague.com
Books: www.kalyankankanala.com
•Patent Risks
Patent Rights
• Territory
• Product Patent - Make, Use,
Sell, Offer for Sale and Import.
• Process patent - Use
Infringement
• Types
– Direct
•Literal
•Equivalent
– Indirect
1
13-12-2012
Direct Infringement
• Claim Construction
• Comparison
• Claim by claim - element by
element
Claim Construction
• Claim
• Preamble
• Transition
• Body
• I claim a ‘plastic ceiling Fan'
comprising of a base connected to a
solid rod, which in turn is connected
to a rotor with three wings.
Claim Construction
• Preamble - I claim a ‘plastic
ceiling Fan'
• Transition - comprising of
• Body - base connected to a
solid rod, which in turn is
connected to a rotor with three
wings.
Claim Elements
•
•
•
•
Base
Solid rod
Rotor
3 Wings
2
13-12-2012
Is this product
infringing?
• A plastic ceiling fan having a base to
be attached to the ceiling and which
has a hollow rod connected to the
base. The hollow rod is connected to
a circular rotor having 4 wings.
• I claim a ‘plastic ceiling Fan'
comprising of a base connected to a
solid rod, which inturn is connected
to a rotor with three wings.
L.B. Plastics V. Amerimax
• Claim:
• 1) A composite gutter guard ...
comprising:
• (a) an elongate polymer guard
panel ...
• (b) a polymer-coated mesh layer
overlying said guard panel ...
and
(c) a
continuous heat weld defining
an uninterrupted longitudinal
weld line connecting said mesh
layer to said guard panel ...
Doctrine of Equivalence
• Equivalents of a claim
– Function
– Way
– Result
• Prosecution History Estoppel
Product
• The product has a frame and a
mesh connected to the frame
with the help of a hot glue. The
mesh is welded at various
points and a hot glue is poured
in the gaps. The hot glue
solidifies and the mesh
attaches to the frame
continuously.
3
13-12-2012
Trademark Rights
• Trademark Risks
Trademark Infringement
• Registered trademark
• Identical or Deceptively Similar
marks
• Identical or similar goods or
services
• Likelihood of confusion
• Right to use
• Right to sue
• Right to obtain relief
Trademark Infringement
•
•
•
•
Registered Trademark;
Famous Mark;
Identical or Similar trademark;
Used in relation to different
goods or services;
• Unfair advantage or Detrimental
- Repute
4
13-12-2012
Passing Off
•
•
•
•
•
Misrepresentation
Course of trade
Consumers
Injury to business or good will
Actual damage
Cable News Network Vs.
Cam News Network
• CNN - World news on electronic
media
• Defendant - Printing and
publication of news, journals
and magazines - ‘CAM News
Network (CNN on cover page)
• Held passing off - Injunction
granted
Ganga Foundry Vs. Ganga
Engineering Works
• Registered trademark “GANGA” manufacture and selling of electric
motors and pump sets including
submersible pump sets.
• Defendant selling the same products
under the same trademark.
• Held liable for infringement.
Horlicks Limited Vs.
Kartick Sadhakan
• Horlicks Trademark - energy
boosting products
• Defendant - Toffee
• Held liable for passing off
5
13-12-2012
?
Adobe Vs. Rohit
• Registered domain name –
www.adobe.org
• Held – Domain Name
registration not authorized
• Restrained from use
• Punitive damages – Rs. 5
lakhs
• Plastyture
• Furnoplast
Rights
•Design Risks
• Sale
• Import for Sale
• Publish or Expose for Sale
6
13-12-2012
Piracy/Infringement
•
•
•
•
Exercises exclusive rights
Without authorization
During term
Within territory
• Identical or Similar
J.N. Electricals Vs. President
Electricals
• Electric Toaster
• Alleged design
– Presence of lines
– Stands different
• Unwary purchaser - likely to
be deceived
• Deceptively similar
• Permanent injunction
granted
7
13-12-2012
Khadim Shoe Vs. Bata
•
•
•
•
Rubber slippers design
Advertised before filing
Prior publication
Registration cancelled
Marico Vs. Raj Oil Mills
•
•
•
•
Parachute cap
Competitor's caps dissimilar
No prima facie case
Injunction denied
Dart Industries Vs. Techno
Plast and Ors.
•
•
•
•
Tupperware products
Prior publication
Validity questionable
Injunction denied
8
13-12-2012
• Thank you
9
Annexure-2