arjun bala-tie-bangalore-21st-april-16
TRANSCRIPT
IP Lifecycle ManagementTiE Bangalore, April 21st 2016
Arjun Bala – Patent Attorney, CPVAManaging Partner
Metayage® IP Strategy Consulting LLP
How does patent awareness help?
Forms of IPR
Trademark
Design
Copyright
Patent
Trade secrets
Intellectual Property Rights
Case Study – Outsourced software development (e.g.,FB v/s Winklevii) Who owns the IPRs? What IPRs are involved? Know-how, data, copyrights,
or patents? Concept or code? Who owns improvements? Governed by contract – Confidentiality, non-
compete, ‘Work for hire’, obligation to assign Executing an assignment specifying the IP that is
assigned, territory, and duration
Case Study – Domain name v/s company v/s Trademark You may register the domain, or even the
company but yet not own the trademark One may oppose within 1 month of
publication in the TM journal One cannot institute proceedings unless the
trademark is registered
Design registrations/patents
Protects the way an article looks, including– its shape and configuration, as well as– surface ornamentation applied to the article
Summary on Design registrations Refers to features of shape, configuration, pattern,
ornamentation applied to an article by an industrial process Appeals to and judged solely by the eye Specific to an article in a class in which it is registered Term – 10 years extendable by another 5 years (14 yrs in US) Time for acceptance - 6 months from date of application Should be new and not disclosed to the public before filing Not applicable to a mere mechanical device action mode or
mechanism or principle of construction of the article
Design patent in the US
Apple’s Design patent
The iPhone was introduced on January 9, 2007 and during the introduction, Steve Jobs stated “Boy have we patented it.”
Apple also made it very clear that they were going to defend the design of the iPhone.
Apple filed four original design applications just four days before the introduction of the iPhone.
Apple filed several subsequent divisional applications.
Apple’s design patent strategy Apple’s divisional
applications broadened the scope of their original application by changing solid lined elements to broken lined elements.
The broken lined elements then became unnecessary, and therefore a competitor’s product would only have to include the solid lined elements for there to be a finding of infringement.
Apple V Samsung – Parent patent
A COMPARISON OF APPLE’S PARENT DESIGN PATENT CLAIMAND THE SAMSUNG GALAXY S-4G
NO INFRINGEMENT
Apple V Samsung – child patent
A COMPARISON OF APPLE’S CHILD DESIGN PATENT CLAIM
AND THE SAMSUNG GALAXY S-4GINFRINGEMENT
Representation of the article Article shown in isolation and features – must be clearly visible The name of the article should be such that it is known in the trade Figure should be of sufficient scale to visualize all details of features No descriptive matter, numerals, dimensions, symbols etc Sufficient views, but no sectional views – perspective views ok Photographs most preferred, hidden parts should not be shown Drawings must be reproducible by photocopying
Case Study – Design registration
Can someone who stole a design register it? Possible, since registration can be applied for
by a person ‘claiming to be the proprietor’ Cancellation possible on grounds of previously
published or registered designs
Trade Secrets Information that provides owner with a competitive advantage,
and is treated in a way to prevent others from learning about it Protected through contract law or the equitable doctrine of breach
of confidentiality Notifying recipients in writing that the information is proprietary
and not to be disclosed without consent Enter into NDAs with employees and third parties Establish policies & procedures to prevent inadvertent disclosure
in publications, seminars, trade shows etc Physical and technological barriers
Identifying Invention Addressing a long felt need? New solution to a problem? Unconventional or out of the box? Improvement over an existing approach? Commercially valuable and useful?
What is a Patent?
Grant of an Exclusive right (for a Limited period of time by the Government to
the Patentee) with respect to an Invention, in exchange for full Disclosure, to
exclude others from making, using, or selling the invention.
Is my invention patentable?
Novelty Non-obviousness or inventive step Utility or Industrial application
Patent, keep as secret, or publish?
Alternative – keep as a trade secret NDAs with employees, partners, investors? Secrets are hard to keep They may be patented by someone else Others may reverse engineer Publish it for free – is it all about execution ?
Freedom to Operate (FTO) search
A freedom to operate search is typically conducted before commercially producing a product or process in a country in order to avoid potentially expensive patent infringement litigation in that country. It shows whether and to what extent a product or process would overlap existing patents. An invention can be patentable but still can infringe a dominating patent.
IP Cycle
Automation of IP Lifecycle
IP TechMatchMarketplace
Publish Patent for Licensing to Market
Negotiate major deal terms
Patent Licenses&
Royalty RevenueManagement
Performance Metrics
Why patent in the US?
Higher valuation of the patent Quicker to get a patent grant Prestigious for the inventor & the company Better chance of patentability Robust enforcement system Easier to license If patenting in the US, then the cost of patenting in
India also is marginal
Patenting cycle
InventionFile a provisional application
Market or sell the invention
File a complete specification/PCT/Convention
12 months
12 months
Market or sell the invention
6 months to few years
Receive an examination report /Office action
Amendments or present arguments
Patent Grant?NO
YES
Review of final application
Issue of Patent Certificate
Receive subsequent office action
If final office action received
File RCE or appeal
Amendments accepted?
YES
NO
Prior art search
< 3months with time extension upto 6 months
Factors in IP Due Diligence
Ownership Risks due to other IPRs (Freedom to operate) Validity Enforceability Valuation Complementarity
Patent Valuation Gauntlet (CPVA)
750 factors Sources of patent value (internal use, blocking
value, licensing, sale) Prosecution analysis (history, estoppel) Additional patent value (brand, leapfrog
competition, cross selling/tag along sales) Assertion analysis, design around analysis
Software patent licensing Ameranth Technology Systems Inc - wireless ordering and payment
processing software product Patent titled "Information management and synchronous
communications system with menu generation Relates to 'computerized menus and reservations for restaurants and
other applications that utilize equipment with nonstandard graphical formats’
Patent license agreements with Radiant, Menusoft, Netwaiter, Brink Software, Savory Mobile, etc
Patent infringement lawsuits pending against QuikOrder, OpenTable, Papa John's, Domino's, Pizza Hut etc
Patent acquisition – Friendster Friendster owned 7 granted patents and 11 pending
applications on social networking A method for connecting a first registered user to a
second registered user through other registered users – search restricted to N degrees of separation
Sold company and patents to MOL global for $26 million, which then sold just the patents to Facebook for 700,000 shares before Facebook’s IPO
After IPO, the shares are worth $140 million
Case study – Veveo Technologies
Vtap search engine and SmartRelevance™ Conversational Platform used by major smartphone manufacturers for intelligent search, personalization, and recommendation
Patent portfolio of 32 issued patents, 60 applications Raised $14 million from Norwest Venture Partners,
Matrix and North Bridge Venture Partners Partnered with Verizon and licensed patent portfolio Acquired by Rovi Corporation in 2014 for $69 million
IP performance metrics
Qs & As
Thank you!
Arjun Bala
Managing Partner
Metayage IP Strategy Consulting LLP
- http://www.metayage.com- +91- 9886572283