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
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
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.
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
27.
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
30.
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