IP Lifecycle ManagementTiE Bangalore, April 21st 2016

Arjun Bala – Patent Attorney, CPVAManaging Partner

Metayage® IP Strategy Consulting LLP

How does patent awareness help?

Forms of IPR

Trademark

Design

Copyright

Patent

Trade secrets

Intellectual Property Rights

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

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

Design registrations/patents

Protects the way an article looks, including– its shape and configuration, as well as– surface ornamentation applied to the article

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

Design patent in the US

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.

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.

Apple V Samsung – Parent patent

A COMPARISON OF APPLE’S PARENT DESIGN PATENT CLAIMAND THE SAMSUNG GALAXY S-4G

NO INFRINGEMENT

Apple V Samsung – child patent

A COMPARISON OF APPLE’S CHILD DESIGN PATENT CLAIM

AND THE SAMSUNG GALAXY S-4GINFRINGEMENT

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

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

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

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?

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.

Is my invention patentable?

Novelty Non-obviousness or inventive step Utility or Industrial application

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 ?

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.

IP Cycle

Automation of IP Lifecycle

IP TechMatchMarketplace

Publish Patent for Licensing to Market

Negotiate major deal terms

Patent Licenses&

Royalty RevenueManagement

Performance Metrics

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

Patenting cycle

InventionFile a provisional application

Market or sell the invention

File a complete specification/PCT/Convention

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

Factors in IP Due Diligence

Ownership Risks due to other IPRs (Freedom to operate) Validity Enforceability Valuation Complementarity

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

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

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

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

IP performance metrics

Qs & As

Thank you!

Arjun Bala

Managing Partner

Metayage IP Strategy Consulting LLP

- http://www.metayage.com- +91- 9886572283

- arjun@myipstrategy.com