intellectual property- protection management and risks
TRANSCRIPT
Intellectual Property-Protection Management & Risks
Presented by:Nishant Kewalramani
Portfolio Manager
AGENDA
Maximizing IP for Start Ups- Protection Strategy
Cost Effective ‘Protection Management’ of IP
Avoiding IP Risks
PROTECTION MANAGEMENT
Protection Strategy
Do VCs sign non disclosures?
Strategy: Minimum Expense- Maximum Advantage
Building a wall around the IP
PATENTS
Identifying core technology area
Make, Use, Sell, Offer for Sale and Import
Technology development Identification Aids
Competitor Watch- Constant update on your competitors Concentrate on big companies Decides direction of your core
technology
Landscape analysis A landscape of all patents in a
technology domain
Pre-Filing Filtering Do not approach the patent attorney without
Homework!!!
Understanding patentability criteria for initial filtering purposes.
To begin with- you are the best judge of your invention
Quality of patents more important than number of patents
© Brain League IP Services Pvt. Ltd
INVENTIONS
Subject Matter
Usefulness
Novelty
Non-obviousness
Specification
PATENTS
Patentability Requrements
Provisional Filing
Only description of the Invention required
Secures the priority date
12 months for filing complete application with claims
Better bargaining position
Multiple inventions in one application
Unity of invention
Divisional application
PCT filing
File PCT instead of Complete if more time required
31 months to file national phase applications
More expensive than a complete filing
Trademark Filing
Not as expensive as patents
Choose a word that catches attention and is ‘not descriptive’ of the goods and services
Intent to Use application/ Proposed to Use Can get registration without use Can continue to hold rights over the
mark for upto 5 years
Copyright Registration
Inexpensive
Long duration of right
Marketing materials, imp documents, websites etc.
Strengthens the wall of protection
Adds value to the entity
Not Disclosing = Protection
Not important enough/Cannot be covered under any other IP
No registration required for Trade Secret Protection
Maintain Secrecy- Employee agreements, non disclosure agreements etc.
Decide what to maintain
PCT Application ≈ Filing in two jurisdictions
Stronger portfolio- negotiating advantage
IP RISKS
PATENT RISK
Search not comprehensive
Non accessible data
18 month lag
Non patented material
FIRST SALE EXHAUSTION & PARALLEL IMPORTS
Sale- rights over the item exhausted
Import of patented articles from other countries.
Can be due to price discrimination
FTO ANALYSIS
Freedom to Operate
Product analyzed against national patents
Also known as Patent Clearance.
18 month lag
Further Limitations in India
NOTICE- INNOCENT INFRINGER Notice- patent with no./patent
pending
Without patent no. not considered notice
Damages may not be awarded
Flows both ways
Trademark Risk
Non registered user has a right
Cannot use anything resembling a famous mark
If not registered- proving ‘notice’ very difficult
OPEN SOURCE- RISK
Open Source Software
May compel you to make your improvement free.
Analyze the kind of conditions attached with the license.
