Intellectual Property (IP) is the most important asset for technology companies. However, protecting IP can be very tricky due to the fact that laws and procedures vary from one country to another. For example, something that is patentable in US may not be patentable in India. Also, some patents are more valuable than others. For example, under most circumstances, a US patent is valued more compared to a corresponding Indian patent. And, protecting IP can be a tedious and costly process. The complexities in the process of IP protection present inventors and owners with the unenviable task of making difficult choices. And, needless to say, it is important for companies, especially those that have very limited resources like start-ups, to choose the right strategy so that they get the maximum value out of their investments in protecting IP. This session is aimed at helping owners and inventors in making those important choices. Take Aways: I. Overview of Patent process. Overview will cover: - basics of patenting process II. Strategies for maximizing return on investment. Strategies include: - strategies for obtaining maximum protection with minimum cost - strategies for obtaining strong protection for a technology? - considerations for deciding on the countries for patenting an invention - strategies for effectively protecting inventor interest and business interest at the same time III. Case Studies. Through case studies speaker will bring out: - the importance of claim writing and a strong patent application - the key steps where an applicant's attention is absolutely required throughout the patenting process

1. PATENTING
STRATEGIES FOR
IT/ITES DOMAINS
By, Arun Narasani
Founder, ipMetrix Consulting Group
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2. Arun Narasani
Founder, ipMetrix Consulting Group (www.ipmetrix.com)
 10 years experience in IP
 5 years experience as a software engineer
 Vast experience in writing and prosecuting applications
 Registered patent agent
 Certified Valuation Analyst
 Certified TRIZ Practitioner
 Published journal articles in technology and law
 Co-authored a book on Indian Patent Law
 B.Tech, IIT Madras
 PGPEM, IIM Bangalore
Speaker Bio 2

3. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Example
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4. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Example
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5. Why patent?
• Patent provides the right to stop others
• Defensive
• Publication
• Neutral
• Patent application with narrow boundaries
• Offensive
• Patent portfolio covering a broad scope
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6. When to file a patent application?
• As soon as possible (ideally)
• Earlier priority date is important in a “first-to-file” world
• Plan around critical events
• Publication
• grace period available for publication in a journal or disclosure before any
learned society or published by applicant
• Public display or use
• No grace period
• Public display in events notified by central government are exempt
• Public use for trial purposes is exempt
• Sale
• No grace period
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7. India patent process – timelines
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File Patent
Application
(1M)
Optional
Search
Publication
(18M)
FER
(42M)
RFE
Deadline
(48M)
Optional
Early Publication
Request
Grant
(54M)
File RFE
Under normal
Circumstances
Spec
Drafting
(3 weeks)
Optional hearing

8. Important steps in the patent process
• Search
• Specification drafting and application preparation
• Filing
• Request for examination (within 48 months from priority)
• Publication (18 months from priority)
• Examination reports and responses (starts at about 24
months after application is queued)
• Hearing
• Grant (12 months from first examination report)
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9. Understanding wait time
Two options to reduce wait time:
- Early RFE
- Early publication: Reduce publication time
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Wait time = Queuing + FER + Examination
Normal wait time = 1.5 Yr + 2 Yr + 1 Yr = 4.5 Yr
Reduced wait time = 3 Weeks + 2 Yr + 1 Yr = 3.1 Yr

10. What application to file?
• Types of applications
• National application
• Provisional
• Non-provisional
• International application
• Patent Cooperation Treaty (PCT, 148 members)
• Convention application
• Paris convention (173 members)
• National phase application
• Follow up application to an International application
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11. What are the typical costs?
• Indian patent costs anywhere between 1 L to 4 L
• US patent costs anywhere between USD 5000 to USD
25,000
• European patent costs are dependent on the number of
countries chosen from European union
• EPO patent costs about USD 10,000
• Protection in specific countries in EU requires “validation” process
and may also require “translation” (if local country patent office
does not accept English applications)
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12. How to reduce costs?
• Look for government schemes
• Funding for researchers in academic setup (DST): Research and
patent funding
• Funding for SMEs (DIT): funding for international patents
• Upto 15 L or 50%, whichever is lesser
• Patent information support for SMEs(TIFAC): patent search and
filing support
• Many state level technology development initiatives also provide
support to SMEs in specific niche areas
• Explore different engagement models with patent firms
• Reduce initial cost by engaging experts only for review
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13. Tips
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Never wait to file RFE; file along with application
File request for early publication
Explore government funding schemes

14. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
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15. Myth
File for one patent and that patent is applicable all over the
globe
• Reality
• Patent law and other IP laws are like any other law; they are
restricted to a country/territory
• What is patentable varies from country to country
• Global patent does not exist
• There exists a single window filing process for multiple countries
• enabled by an international treaty called Patent Cooperation Treaty
(PCT)
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16. PCT Stages
• International stage
• International application through receiving office
• International search report
• International preliminary examination (optional)
• National stage
• National stage application must be filed subsequent to the
International application
• National offices will examine applicantions like they do with the
national applications
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17. International application process
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Source: HANDBOOK OF BEST PRACTICES; © 2007. AM Schneiderman.

18. International filing strategy
• File a national application
• If US is one of the countries, then file US application separately
from PCT
• US applications are examined faster
• Follow it up with the International application claiming
priority from the earliest national application
• When invention not patentable in India, you have two
options:
• Obtain foreign filing permit and file abroad (ex: US)
• File provisional and file subsequent applications outside India in
one or more convention countries
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19. How to choose countries?
• Primarily driven by market
• General pointers:
• Key markets for ICT: US, EU
• Huge markets and economies: China, Japan, and India
• Large markets and economies: South Korea, Brazil, Russia, and
Mexico
• Regions where translation is not required: Canada, Australia, and
South Africa
• Proximity to region of interest
• US: Canada, Mexico, Brazil
• India: SAARC nations
• Manufacturing driven technology: China
• Software and ICT technologies: India
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20. Tips
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Go for PCT if protecting in 4 or more countries
Use PCT to delay decision process
File US application before PCT when applicable

21. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
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22. What is a provisional application?
• Provisional application allows for “booking” priority date
without filing the full application
• Provisional application does not result in patent rights
• Must follow up with a “complete” patent application within
12 months
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23. Myth
File a quick and dirty application without the secret sauce,
and figure out the rest in 12 months
• Reality
• Provisional application written too narrowly will result in losing of
priority date other subject matter
• Example:
• Provisional application: Method to make orange juice (27th May
2012)
• Non-provisional application: Method to make juice from citrus
fruits (20th May 2013)
• Priority date applicable only to the methods of making orange juice
• As a result, some claims will have 2012 priority date and some
2013 date
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24. When to file a provisional?
• Technology is evolving and the final shape is not clear
• Commercial viability of technology is not clear
• Funding is a constraint
• Technology is not patentable in India
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25. What are the benefits?
• Delay the commitment to the process and cost
• Reduce upfront costs
• Adds to the overall costs by a small percentage
• Earlier priority date
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26. Best practices
• Think of provisional application as a non-provisional
application without the boundaries defined
• Secret sauce need not be disclosed in a specification, if it
cannot be reverse-engineered
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27. Tips
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Get a detailed provisional application done
Use provisional only when necessary

28. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
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29. Myth
Just talk to the expert and the expert will figure out
everything for you
• Reality
• No one understands the invention better than the inventor
• However good the expert is, the inventor must spend time in
ensuring that all the relevant details are provided
• Entrepreneurs tend to “outsource” writing part
• External counsel is different from an internal counsel
• Ideally “expert” should be spending more time on claim and
strategy
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30. Role of the inventor
• Providing clarity on where the novelty lies
• Helps patent professional to start on the right note
• Providing inputs on protection goals of the organization
• Helps patent professional is writing effective claims
• Providing information on the various alternative
implementations (whether minor or major changes)
• Helps patent professional in writing detailed specifications that can
provide broader scope to claims
• Providing inputs on commercial environment and how the
technology will actually be transacted
• Help patent professional target potential infringers in writing the claims
and specification
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31. Tips
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Reset your expectations for an outside counsel
Make it a collaborative process

32. Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
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33. Caselet 1:
• Invention: method for sending an SMS automatically
transliterated based on user preferences
• Claim options:
Method:
• Method for transliterating SMS messages
• Cover transmitter side and receiver side together
• Method for transliterating messages
• Cover only the transliteration of messages (one of transmitter or receiver)
• Method for automatically transliterating content based on an event
(two claims – one for server and one for device)
• Cover transliteration of content (one of transmitter or receiver)
Apparatus:
• System for transliterating SMS messages
• A device for sending a transliterated SMS
• A device for transliterating content based on an event
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34. Caselet 2:
• Invention: method for CPU cache management for better
performance of applications on handheld devices
• Claim options:
• Method:
• Method for enhancing performance of applications on a computing
device
• Method for managing cache in a CPU
• Apparatus
• Device claim directed to the handheld
• Device claim directed to CPU
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35. WWW.IPMETRIX.COM/WEBINARS
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