International International Property Rights Conference ... · The International Intellectual...
Transcript of International International Property Rights Conference ... · The International Intellectual...
International International
Property Rights Conference Report
8th & 9th January, 2009
1
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
INTERNATIONAL INTELLECTUAL PROPERTY
RIGHTS CONFERENCE
(INDO-US Knowledge Enterprise)
The International Intellectual Property Rights Conference, hosted by ITAG Business Solutions Ltd. (a
business solutions and IP service provider), and co-organized by the Indian Chamber of Commerce
(ICC), in collaboration with knowledge partners Sughrue Mion PLLC, USA, and the Institute of
International Trade, Kolkata, was held on 8th and 9th of January 2008.
The conference aimed at enhancing awareness about the pivotal role of Intellectual Property Rights
(IPRs) in today’s Globalized knowledge economy. Deliberation on various segments of Intellectual
Property Management formed the core elements of discussion by eminent international speakers.
The conference focused on steel, automobiles, construction engineering, mining engineering,
electronics, information technology, and similar fields of industries. The theme of the conference –
Empowering Business Entities through IPR – rightly envisaged the vast domains covered in the
discussions.
The various issues discussed in the conference hovered around the following key areas –
IPR Policy and IPR Strategy
Patentability Assessment on Steel, Construction Engineering, Automobiles, Mining,
Electronics, Computer Software and Business Methods
IP Commercialization
Issues involved in Technology Transfer, Merger & Acquisitions
IP Due Diligence
IP Risk Management
IP Insurance
IP Litigation & Dispute Resolution
IP Prosecution under different Jurisdictions: A comparative study of USPTO, EPO, JPO &
Indian Patent Office (IPO)
IP Valuation
IP Securitization and IP Taxation, and
IP Prosecution
2
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
PROGRAM OVERVIEW
Inaugural Speakers and the Issues dealt with:
Mr. Sanjay Budhia, President, Indian Chamber of Commerce
Mr. Budhia initiated the discussion with a brief overview of the roles and responsibilities
of the ICC. He emphasized on the importance of IPR enforcement for the economic
growth of India and as a source of foreign investment, thereby increasing employment
opportunities in the country. He further explained the growing awareness about IPR and
its role in future business opportunities, expressing an optimistic view towards the
success of the conference in dealing with the issues at hand.
Mr. V. Ravi, Controller General, Patent, Trademark and Design, Govt. of India
He gave a brief overview of the global scenario with respect to IPR, stressing upon the
importance of IPR and its inevitability for the growth and development of any country. He
took it a step further by adding the importance of commercializing IP and noted that it is
one of the key factors of economic success of a country. A detailed discussion on the
evolution of IPRs in India followed thereafter.
Ms. Beth Payne, Honorable Consul General, US Consulate
The importance of IPR protection and its significance in accelerating growth and
development was the main emphasis. Ms. Payne pointed out the fact that in a changing
global scenario, a weak IP protection is a potential barrier to international trade and
development. Improving IP protection is in the best interest of both USA and India as
Indian companies in US and vice versa would benefit from IPRs.
3
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
Mr. M.K. Agarwal, Managing Director, GATI Ltd.
The significance of an organization having access to new knowledge and being able to
translate it into viable commercial opportunities was discussed. Citing classic examples
of Basmati rice and Turmeric, he explained how a nation progresses through IPR
generation.
Dr. D. R. Agarwal, Director, ITAG Business Solutions Ltd
The value of human resource as the most important economic resource of a country
was emphasized. He drew attention to the fact that 64% of the global economy is
contributed by human resource and, in such a scenario, the immense resource that can
be exploited from the human mind, cannot be negated. He stressed upon the 3 basic
ingredients for an effective IP system - legal framework, administration, and
enforcement.
He continued further to explain certain key issues related to Intellectual Property Asset
Management. IP mining, i.e. identification of intellectual property as an asset, IP
Policy and Strategy, IP Protection, crime, and enforcement, and accounting and
valuation of IP were discussed. He pointed out that, despite the importance of IP in
modern businesses, accounting for intangibles remains a challenge for both preparers
and users alike. He explained the Indian Accounting Standard 26 which regulates the
accounting for intangibles and explained amortization of IP. The various approaches
adopted for IP valuation were also discussed and the importance of IP Portfolio
management by an organization was assessed.
Commercializing IP, IP Broking, and IP Auctions were discussed to help
organizations identify ways to leverage their IP Assets for economic gains. IP
Technology Transfer, Financing, And Securitization were also discussed as ways to
improve international trade and monetize intellectual property. The growing concern
about R&D companies falling prey to patent sharks was considered. Firms with hidden
intellectual property often surface, threatening to sue the victimized company, when
4
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
their rights are inadvertently infringed. The high risks associated with the company’s IP
being exposed to patent trollers was brought to the forefront.
Finally, IP Audit, a systematic review of IP assets owned or developed, was discussed
in details. The importance of an IP register and IP due diligence was emphasized. IP
analysis and landscaping as opportunities for international trade and development was
also looked into. How organizations are based on a comprehensive analysis of patents
for planning future research and growth opportunities is called landscaping.
The main purpose of the discussion was to enlighten the participants to identify gaps
and clusters in technology and gain a competitive insight through the process of IP
Asset Management and determine the commercial viability of patents through
exhaustive analyses and research.
Mr. Alan J Kasper, President Elect, American Intellectual Property Law Association, USA
He expressed his concern for the absence of a proper IPR strategy in India. He
stressed upon three key factors for developing a global IP strategy -recognition of IP as
an important asset, importance of IP with respect to the development and marketing of a
new product and a proper plan.
5
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
TECHNICAL SESSIONS (I to VI)
TECHNICAL SESSION I
Subject:
IPR Policy and IP Strategy
Speaker:
Mr. Chid Iyer, Partner, Sughrue Mion PLLC, USA
Chairman of the session:
Mr. V. Ravi, Controller General, Patents, Trademarks and Designs, Govt. of India
Abstract:
Mr. Iyer focused on the fact that IPR policy and strategy determines the strength of any organization to
stay competitive in business and to provide for protection of intellectual properties by minimizing the
risk of IP litigations. He emphasized that for any organization, an IPR policy is as important and critical
for success as the business policy and the HR policy. He also added that a policy on IPR encourages
research and development activities in the country. An IPR policy plays a key role in developing the IP
strategy of a business. An IP strategy is developed by conducting IP landscaping in the field of
technology where the company intends to commence its business. IP strategy is also significant in
effective IP commercialization as it helps to identify those patented technologies which cannot be used
within the organization due to lack of funds or other reasons, and can thus be licensed and be more
economically useful.
6
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
TECHNICAL SESSION II
Subject:
Patentability Assessment on Steel, Construction Engineering, Automobiles, Mining, Electronics,
Computer Software, and Business Methods
Speaker:
Mr. John F. Rabena, Partner, Sughrue Mion PLLC, USA
Chairman of the session:
Mr. Alan J Kasper, Senior Partner, Sughrue Mion PLLC, USA
Abstract:
Patentability Assessment is the search that is conducted to evaluate the patentability of an invention
based on the statutory requirements from a patent office. These statutory requirements from a patent
office include: non-obviousness, novelty, and usefulness. In addition to evaluating patentability, the
assessment helps in defining and drafting patent for an invention. He reemphasized that a patent right
is an important legal document as it gives exclusive rights of usage to the holder of the right for a
period of up to 20 years. He also discussed about standardizing the products according to the
documentation requirements of the process at it happens, in order to keep an infallible record of the
process and conducting timely quality checks and reviews. Mr. Rabena spoke about the significance
of patentability assessment in each of the industrial arenas mentioned in the subject. The bottom line
of the discussion was that organizations should seek to achieve the most appropriate protection for the
least upfront investment while allowing as long a marketing period as possible to find a licensee or
other partner to move it to a practical application and hopefully pick up the past and/or ongoing patent
costs.
7
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
TECHNICAL SESSION III
Subject:
IP Commercialization, Issues involved in Technology Transfer, Mergers and Acquisitions, IP Due
Diligence
Speaker:
Mr. Alan J. Kasper, Senior Partner, Sughrue Mion PLLC, USA
Chairman of the session:
Mr. Mainak (Miku) Mehta, Partner, Sughrue Mion PLLC, USA
Abstract:
Commercializing IP is the process one undertakes to move its innovation from “just another brilliant
idea for a product or service” to the market place. Several aspects of IP commercialization, including
IP leveraging and IP financing were discussed. Modern approaches like IP auctioning through online
established auctioneers and through IP exchanges with the help of technology market and technology
trading exchange were a matter of discourse. The use of IP has also expanded to its use as collateral
by pledging patents, trademark or copyrights similar to tangible assets such as real estate, equipment,
and machinery.
Defining technology transfer (TT), as transfer from one entity to other, he mentioned that existing
knowledge, facilities, or capabilities developed under research &development (R&D) departments are
utilized to fulfill public and private needs, which can be transferred, in three ways through licensing,
franchising and merger & acquisitions. Successful licensing requires very secure IP from issued and
pending patents to trade-marks, copyrights and proprietary info. However, to be in a position to
franchise the business, product or service, one must be successful and should be able to prove that
there are profits and also growth in the future.
Due diligence is prerequisite to the valuation process, regardless of the methodology used which is
again a requisite for Merger & Acquisition.
8
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
TECHNICAL SESSION IV
Subject:
IP Risk Management, IP Litigation & Dispute Resolution
Speaker:
Mr. Michael R. Dzwonczyk, Partner, Sughrue Mion PLLC, USA
Chairman of the session:
Professor Dhrubajyoti Chattopadhyay, Pro-Vice Chancellor, University of Calcutta
Abstract:
A company or an entity may have the same threat for intangibles as they have for tangible assets,
from its competitor for infringing upon the rights to the technologies of other. This risk may result in
litigations and disputes which may cost much higher than the cost of insurance. So to avoid such
litigations based on IP risks, every intellectual property in an entity should be insured. IP insurance can
also be taken to cover legal costs incurred for taking enforcement action and can also act as a
deterrent to potential infringers. Sometimes, IP insurance is also a prerequisite for venture capital
financing agencies which often ask for insurance of the concerned IP assets. Business secrets are
exposed to the risk of IP theft and may cause huge business losses to a company. Unlike
infringement, theft is a criminal offence.
9
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
TECHNICAL SESSION V
Subject:
IP Prosecution under different jurisdictions: A Comparative study of USPTO, EPO, JPO & Indian
Patent Office (IPO)
Speaker:
Mr. Mainak (Miku) Mehta, Partner, Sughrue Mion PLLC, USA
Chairman of the session:
Mr Chid S Iyre, Partner, Sughrue Mion PLLC, USA
Abstract:
Mr. Mehta discussed about patentable subject matter - novelties, inventive steps, disclosure, claims
and foreign filing licensing steps, under Intellectual Property rules of different countries like Europe,
Japan, US and India. He went on to explain IP Prosecution and discussed how the protection of
Intellectual property and preventing competitors from using the know-how and techniques is the main
aim of IP prosecution. Protection can be done in various forms like Patent, Trademark, Copyright and
Trade secret. Different countries have different Intellectual Property Right's procedure, so country wise
decision to pursue patent protection should be done based on strategies and international treaties.
One should have proper prosecution strategies to avoid the repetitions of prosecution history
disclaimer, to comply with duty of disclosure and also to maximize cost efficiency and minimize
pending applications. Officials should be responded to aptly and timely in case of any office action
which might have taken place. For instance, if India is considered then there is no limit on the number
of office actions, but there is a limit of twelve months to place the application in condition for
acceptance.
10
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
TECHNICAL SESSION VI
Chairperson of the session:
Professor Dr (Mrs.) Somasri Mukhopadhyay, Alpha Institute of Business Management (ICFAI), Kolkata
A.
Subject: IP Valuation
Speaker: Mr Chid S Iyre, Partner, Sughrue Mion PLLC, USA
Abstract:
IP Valuation is important for IP pricing and for raising money through any other route. Valuation is
required in almost all business areas like merger & acquisition, technology transfer, joint venture,
license fees and others.
Various specific methods of valuation of IP like twenty-five percent rule, Industry Standard Rating &
Ranking, Monte Carlo Analysis, and others were discussed. General methods of IP valuation like cost,
market and income methods were also a part of the discourse.
B.
Subject: IP Taxation
Speaker: Dr D R Agarwal, Director, ITAG Business Solutions Ltd.
Abstract:
Dealing effectively with the taxation of IP in multi-national businesses involves many different tax
disciplines. It is essential to consider the overall structure of IP in a multinational business so as to
identify all the situations where taxation issues may arise like transfer of any IPR, income from royalty,
transfer of IPR as capital asset and transfer pricing. Referring to the Indian Income Tax Act, he
stressed on international transaction relating to IP and discussed sections 92A to 92 F covering
transfer pricing in details.
11
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
C.
Subject: IP Enforcement
Speaker: Mr Goutam Banerjee, Advocate, Patent and Trademark
Attorney, Khaitan and Co, Kolkata
Abstract:
Intellectual Property Rights offences now affect everything that is manufactured and has a commercial
value, touching all sectors from horticulture to the auto industry to pharmaceuticals. The offenders
keep pace with the latest technology and with trends in the global market.
Mr. Gautam Banerjee aimed attention at IP Enforcement, and enlightened that enforcement can be
done at three levels - judiciary, police and customs at border. Civic remedies are available in case of
patent act violation, but in case of copyright laws and trademark laws violations, it is treated as
criminal actions.
12
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
SOME CHOSEN MOMENTS FROM THE CONFERENCE
A Panoramic view of the conference
Dr. Agarwal (Director) in conversation
with Mr. Alan J Kasper (left) and Ms.
Beth Payne (right)
L to R: T.K.Ghosh, V Ravi (Patent
Office), Dr Agarwal, Sanjay Budhia
(ICC) and Ms Beth Payne (US)
13
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
A cross section of the audience
Dr Agarwal giving a presentation of
Intellectual Property Taxation
Maimunah Baharuddin (Assistant
Secretary, Ministry of Science,
Malaysia) with Dr Agarwal
14
II
PR
C R
ep
ort
| 8
th &
9th
Ja
nu
ary
, 2
00
9
Conference Speakers with
IITrade Team
OUTLOOK
The conference concluded on the note that intellectual property laws will become homogeneous and
uniform in a gradual evolution. The menace of counterfeiting and piracy of copyrights, trademarks, and
patented inventions will reduce with constant improvements in the IP system through various
awareness programs in the years to come. However, a greater challenge is still awaiting the
consensus on the issues on extension of geographical indications beyond wines and spirits,
recognition of traditional knowledge, and bio-diversity as part of the TRIPs agreement of the WTO.
15
IIP
RC
Re
po
rt |
8th
& 9
th J
an
ua
ry,
20
09
SHARING THE ENLIGHTENMENT
…this is what the participants had to say:
"I think that such seminars should be organized in all Colleges; Institutions & Universities where considerable R&D work is carried out .This would boost Patent filing in our country."
"Make this programme a regular feature to reach to the general public so value can be unfolded."
"Very well organized and contents are good exposure on IPR."
"Lectures related to purely scientific issues could have been more. European patenting issue was absent."
"Such Conferences should be held at regular intervals so awareness among more and more people will be there."
"Overall impressive"
"Very informative and educative. It has created awareness about IPR amongst corporate very effectively."
"Congratulate you all for the successful completion of the event."
"The Conference was 'historic' in the sense that perhaps this was the first of its kind IPR Conference in Kolkata. We look forward to further such events in Kolkata, for the better protection of IPR and the interests of the consumers, along with the leading businesspersons, IP practitioners, members of the law enforcing agencies, and the media people. Wish you all the success in future such events."
"Kudos!! to all of you, who worked relentlessly, day in and out, in transforming the mega event, a grand success. No doubt, the conference, the first of its kind in Kolkata is quite enriching in its content and presentation."
ACKNOWLEDGEMENTS AND THANKS TO ALL THE SPEAKERS AND PARTICIPANTS