Your INSIGHT into IP

Intellectual Property
An Overview

Tarun Kumar Bansal

Director, Sagacious Research

March 14, 2009

© 2009 Sagacious Research. All Rights Reserved.

Presentation Plan

What is Intellectual Property

Need of Intellectual Property System

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

More on Patents

 Overview

 Patenting Strategy

 Patenting Process

 Sample Costs and Patenting in India

Patents Considerations for non-patenting Organizations

Other Uses of Patent Information

March 14, 2009 Slide 2

© 2009 Sagacious Research. All Rights Reserved.
 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

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

March 14, 2009 Slide 3

© 2009 Sagacious Research. All Rights Reserved.
 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 Rights Conferred by Owning an

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

March 14, 2009 Slide 4

© 2009 Sagacious Research. All Rights Reserved.
 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
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

March 14, 2009 Slide 5

© 2009 Sagacious Research. All Rights Reserved.
 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
• Trademarks • Plant Breeder’s Rights
• Copyrights • Semiconductors and chip designs
• Geographical Indications • Trade secrets
• Industrial Designs • Domain Names

March 14, 2009 Slide 6

© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Overview (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
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)
March 14, 2009 Slide 7
© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Overview (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).
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

March 14, 2009 Slide 8

© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Patenting 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
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

March 14, 2009 Slide 9

© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Patenting Process

File Application(s) is/ Application(s) is/

Provisional / Non-provisional are Published are Granted
Patent Application

If filing in File complete Pay Maintenance

‘Native
patent specification Prosecution in Native Country Fee in Native
Country’ Only
in Native Country Country

If filing in
limited File complete Pay Maintenance
Countries e.g. patent specification Prosecution in each of the Desired Countries Fee in Desired
(2/3 countries) in Desired Countries Countries

File a PCT
If filing Pay Maintenance
internationally
application with Enter National Phase in Desired Prosecution in the National
Fee in Desired
via PCT, (e.g. complete patent Countries Phase of each Desired Country
Countries
> 3 countries) specification
Options

0 12 18 30 ~36 - 60
Months Months Months Months Months

Timeline

March 14, 2009 Slide 10

© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Notes

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

March 14, 2009 Slide 11

© 2009 Sagacious Research. All Rights Reserved.
 More on Patents
Indicative 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.

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.

March 14, 2009 Slide 12

© 2009 Sagacious Research. All Rights Reserved.
 Patent Considerations
Non-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/
service to avoid infringing on other’s intellectual property

March 14, 2009 Slide 13

© 2009 Sagacious Research. All Rights Reserved.
Other Uses of Patent Information
W h e n & W hy c o n s i d e r Pa te n t Re s e a rc h

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

Hence, If you are involved in any of the following activities, you will 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

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

March 14, 2009 Slide 14

© 2009 Sagacious Research. All Rights Reserved.
Your INSIGHT into IP

Thank You

Tarun Kumar Bansal

Director, Sagacious Research
tarun.bansal@sagaciousresearch.com
http://www.sagaciousresearch.com
Ph. No: +91-931 387 2266