Prof. Tase and Vijay Tase’s

IPR Training Workshops

Science, Technology, TIFR, and IPR

02 November, 2007

• IPR in national and global context

• Types of IPR

• Process of IPR acquisition

• IP valuation and management

• Infringement

• Development of IPR personnel

Typical coverage of the IPR workshop for senior managers

IPR – the fundamental premisesIPR – the fundamental premises

• We all work hard and in good faith

• Most scientific development is ‘building on the past’

• Patents for ‘obvious’ inventions would stifle progress

• No patents means no incentive

• Must play the IPR game

1. IPR in National and Global Context

Broad context of IP

• Changing world• Not exactly a ‘friendly neighbourhood’• Need for the awareness of what’s yours• Creation of IP for survival and growth

In 1421, Filippo Brunelleschi received the world's first patent for an invention. He created a method of transporting marble more cheaply via a paddleboat.

We have a long way to go…

His patent gave him the right to burn any ship borrowing his design for three years.

The largest recipients of patent filings are the patent

offices of Japan, the United States of America (USA),

China, the ROK and the European Patent Office (EPO).

These five offices account for 77% of all patents filed in

2005, (a 2% increase over 2004), representing 74% of all

patents granted.

With an increase of almost 33% over 2004, the patent

office of China became the third recipient of patent filings

in 2005.

IPR in international news

WIPO Report Reveals Changing Geography of Innovation with Highest Patenting Growth Rates in North East AsiaWIPO, 20 August, 2007

The MD Speak

Mahindra Innovation at low cost:

Scorpio: $30M – engg design, $50 Production specific expenses, $40 facilities

Integrated Production Management System:

$140k v. $2.6m import

Bolero: Seat installation system: $30k Italian, $1500 inhouse.

So, where’s the IP?

The CEO Speak

DNN Money, 27 Aug., 2007

Infringement

IPR and M/A JVs in the News

Tata Motors: “The management will expect a return from the R&D just like any other investment. They will get more aggressive about guarding the output of their research”

“As foreign companies set up their own operations, the local firms are having to spend their own money on R&D”

TVS: 12 crores to50 crores in 7 years

Bajaj: From under 3Cr to 68 crores within a decade

Tata Motors: This is just a start. As more Indian companies build their own products, the litigation will only be on the rise.

STATE OF PATENTING IN INDIASTATE OF PATENTING IN INDIA

1992 2500 applications in India

1600 900 Foreign Indian Nationals Nationals

Applications in Japan

130,000

STATE OF PATENTING IN INDIASTATE OF PATENTING IN INDIA

2003 12000 applications in India

10,000 2,000 Foreign Indian Nationals Nationals

Applications in Japan

450,000

IPR in Worldwide Research Organisations

National Science Foundation, USA – Policy On Patents

CERN, Europe – Policy On Technology Transfer

OECD – Turning Science Into Business – Patenting And Licensing At Public Research Organisations

Oxford University – Intellectual Property Policy

Cornell University – Patent Policy

IPR in Worldwide Research Organisations

NASA – 641 (1941)

Oxford University – 21 (191)

TIFR – 3 (20)

CERN – 8 (74)

Cornell University – 52 (258)

MIT – 3020 (8572)

IIT – 82 (267)

Mahindra and Mahindra – 1 (25)

L&T – 1 (56)

COMPANY NO. OF PATENTSToyota - 99,999+

GM - 11,000

Honda - 97,000+

Renault - 23,000+

Daimler Benz - 7,000+

Land Rover - 2,100+

Volkswagen AG - 16,000+

Porsche AG - 12,000+

General Electric/GE - 25,553

SONY - 20,873

Ford/Ford Global - 8,888

IBM - 99,999+

European Patent office database, Sept. 2007

- What do all these numbers mean?- Are they ‘technically’ sound?- Are they of strategic importance?- Do many/most make money?

- Creates an image- Commands respect at the bargaining table- Reflects a culture at the ground level- It’s a hallmark of global powerhouses

Need for IPR

Essential Panchasheel

Innovation

Creativity

Entrepreneurship

IPR

InventionSuccess

Goregaon Pattern

Ulhasnagar Pattern

What IP can do for you

• Wealth creation• Legitimate ownership• Monopoly – market advantage• Entry into the big league• Bargaining power• Talent attraction• Collaborations• Image of a trustworthy organisation• Stay in business and keep others out!

No!!!

IPR – is it a panacea?

Vigilence required

IPR or not - people will steal

You may not always win (even if you are in the right)

IPR costs a lot of money

Why bother then?

Why bother then?

IPRs are necessary no matter which side of the wall you are on!!

Protect your own ideas

Let others know your boundaries

Modify others’ ideas legitimately

Don’t become a trespasser

Need for IPR for nations as a whole

Japanese Industrial Development and IPR

From about 1600 for about 250 years the door was closed to the outside world

In 1854, when Japan reopened the doors, the science and technology of the West, had surpassed Japan.

Japan did not have the power to compete against the advanced Western countries.

Japanese Industrial Development and IPR

As the early stage of industrialization, it was necessary to import leading technology from abroad.

Japan had to import technology from abroad, for which it was vital to establish an IPR system.

1884, the Trademark Ordinance; 1885 the Patent Ordinance.

However, there was the problem that patent rights of foreigners were not recognized.

Sakichi Toyoda – Founder, Toyoya

In his lifetime, Toyoda himself acquired 84 patents and 35 utility models.

Total No. of patents 99,999+

Japanese Industrial Development and IPR

Soichiro Honda, Founder the Honda Group.

Honda himself acquired 115 patents and 359 utility models.

Japanese Industrial Development and IPR

Total No. of patents 97,000+

Sony, Masaru Ibuka, Co-Founder Sony.

Ibuka himself acquired 50 patents and 53 utility models.

Japanese Industrial Development and IPR

Total No. of patents 20,000+ worldwide

A large number of venture industrialists in Japan used the patent system and, along with developing the companies they established, also caused the Japanese economy to develop.

IPR to Economic Development

Takahiko KONDO Commissioner Japanese Patent Office November 16, 1999 Tokyo

Infringement

www.peertechnical.netMechanicalP.Lawsuit

Haworth <-- Steelcase

1996$211,000,000

ElectronicsP.SettlementIntergraph <-- Intel2002$300,000,000

MedicalP.LawsuitCordis/Johnson &

Johnson <-- Boston Scientific

2000($324,000,000)

SoftwareP.SettlementPitney Bowes <-- HP2001$400,000,000

ElectronicsP.SettlementLitton Industries <--

Honeywell2001$420,000,000

SoftwareP.BuyoutInterTrust <-- Sony,

Philips2002$453,000,000

MechanicalP.BuyoutSpinBrush Inc. <-- Procter & Gamble

2002$475,000,000

ElectronicsP.SettlementTexas Instruments

<-- Toshiba1990$500,000,000+

ComputerP.LawsuitDigital <-- Intel1997$700,000,000

ChemicalP.LawsuitPolaroid <-- Eastman

Kodak1991$873,000,000

SportsC.LicenseMajor League

Baseball <-- Fox Television

2002$2,500,000,000

TechnologyLegal ActionPartiesYearAmount

Xerox Corp v. University of Texas. Feb 2002

HP v. Cornell University, 2001

MIT (Boston)/Electronics for Imaging v. A lot of

companies - 2002

Institutions in IPR lawsuits

Steal this idea: university patent-infringement suits flourish - UpdateUniversity Business,  March, 2002  by Tim Goral

Valid Steal

Direct Infringement

Contributory or induced Infringement Vicarious Infringement

Types of InfringementTypes of Infringement

Direct

Contributory

Vicarious

It is wholesale reproduction and distribution of ‘protected’ works

It occurs when someone knowingly encourages infringing activityWhen for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts

Ignorance no excuse!

Infringement – a tricky situationInfringement – a tricky situation

• Many of us work hard and in good faith

• Most scientific development is ‘building on the past’

• Patent monopoly would stifle the development

• No patents means no incentive

• Must play the IPR game

How to deal with infringement?

How to deal with infringement?

Offender Defender

Identify Your Position

What should you do with the infringer?

It’s all about money, not emotions

Don’t be intent on destroying the infringer

What should you expect out of an infringement suit?

Must work out a solution

How to deal with an offender?How to deal with an offender?

• Take action at the earliest• Do your homework• Assess whether you are in the right• Make sure notice has been served• Offer a way out without compromising your

business• Study the history of your own firm as well as that

of the offender• Court of law• Deal objectively, not emotionally

IP Generation and valuationIP Generation and valuation

Resources for Successful IP Generation

• ‘Breaking out’ mindset

• Tools for inventive creativity

• Interrogator

• Writing abilities

Management’s encouragement (moral and financial)

What is the value of an IP?

Single IP may or may not carry much/any value, a carefully constructed portfolio will normally carry high value

Value?

IP competitive strategies

B

M&M

M&M M&M

M&M

M&M

M&M M&M

M&M

M&M

M&M

Design Around

M&M

M&M

M&M M&M

M&M

M&M

M&M M&M

M&M

M&M

M&M

Build A Fortress

Wiggle your way out

Live and let live

Forming Strategic Alliances

The cross-licensing signaling a new trend, allows the electronics giants to tap each other's vast patent portfolios of basic technologies.

Sony, Samsung to share patents