Arjun Bala-TiE-Bangalore-21st-April-16
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This document summarizes an IP lifecycle management presentation. It discusses various forms of intellectual property including patents, trademarks, copyrights, and trade secrets. It covers topics like ownership of IP in outsourced software development, domain names vs trademarks, design registrations and patents. Case studies on Apple's design patent strategy in lawsuits against Samsung, and on software patent licensing by Ameranth Technologies, are discussed. The presentation also addresses identifying inventions, conducting freedom to operate searches, automating the IP lifecycle, factors in IP due diligence, and patent valuation. Metrics for assessing IP performance are also mentioned.
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Arjun Bala-TiE-Bangalore-21st-April-16
- 1. IP Lifecycle Management TiE Bangalore, April 21st 2016 Arjun Bala – Patent Attorney, CPVA Managing Partner Metayage® IP Strategy Consulting LLP
- 3. How does patent awareness help?
- 5. Forms of IPR Trademark Design Copyright Patent Trade secrets Intellectual Property Rights
- 6. 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
- 7. 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
- 8. Design registrations/patents Protects the way an article looks, including – its shape and configuration, as well as – surface ornamentation applied to the article
- 9. 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
- 10. Design patent in the US
- 11. 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.
- 12. 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.
- 13. Apple V Samsung – Parent patent A COMPARISON OF APPLE’S PARENT DESIGN PATENT CLAIM AND THE SAMSUNG GALAXY S-4G NO INFRINGEMENT
- 14. Apple V Samsung – child patent A COMPARISON OF APPLE’S CHILD DESIGN PATENT CLAIM AND THE SAMSUNG GALAXY S-4G INFRINGEMENT
- 15. 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
- 16. 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
- 17. 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
- 18. 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?
- 19. 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.
- 20. Is my invention patentable? Novelty Non-obviousness or inventive step Utility or Industrial application
- 21. 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 ?
- 22. 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.
- 23. IP Cycle
- 24. Automation of IP Lifecycle IP TechMatch Marketplace Publish Patent for Licensing to Market Negotiate major deal terms Patent Licenses & Royalty Revenue Management Performance Metrics
- 25. 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
- 26. Patenting cycle Invention File a provisional application Market or sell the invention File a complete specification/ PCT/Conven tion 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
- 28. Factors in IP Due Diligence Ownership Risks due to other IPRs (Freedom to operate) Validity Enforceability Valuation Complementarity
- 29. 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
- 31. 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
- 32. 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
- 33. 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
- 35. Qs & As
- 36. Thank you! Arjun Bala Managing Partner Metayage IP Strategy Consulting LLP - http://www.metayage.com - +91- 9886572283 - [email protected]