Patent Registration

By,

Parth Purohit

Jinali Mehta

Flow of Presentation

What is IP ?Methods of IPWhat is Patent ?Patentable InventionsProcedure of PatentingBenefitsDifferent StrategiesHow to Deal With Competitors ?Damages For InfringementExample of Patent

What is Intellectual Property (IP)…

Intellectual Property (IP) is a group of legal rights that provides protection over things people create or invent.

Methods of Protecting IP…

Contracts

Copyrights

Trademarks

Trade Secrets

Patents

What is a Patent?

Monopoly

Granted by government authority

Limited exclusive privilege that the law allows a patentee in his own invention

Patent is tool of developing nation

Purpose Of Patents

Patents provide library of organized technical

information that others may learn from and

improve upon

Patent system encourages publication of new scientific and engineering work which can be used to inspire, educate, or inform others to make improvements or new developments

Purpose Of Patents Cont’d

Patent excludes others from making , using or selling your invention

Your patent may not allow you to practice the invention defined therein

No guarantee of Freedom to Operate

Patents- Examples

Patentable Inventions• A patent can be granted for an invention which may be related to any

process or product. The word “Invention “ has been defined under the Patents Act 1970 as amended from time to time.

• “An invention means a new product or process involving an inventive step and capable of industrial application”

• New invention” is defined as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art;

Patents…

Protects implementation of technical ideas– Article of Manufacture (e.g., light bulb)

– System (e.g., cell phone)

– Process (e.g., process of making or using)

• Microwaving Food (Spencer)

• Search engine (Google)

• 1-click purchase (Amazon)

Types of Patents– Utility Patent

– Design Patent

– Plant Patent

Patents- Time to get

18 months to 5 years from filing of application.

length varies by technology

- software patents – up to 5 years Claims may never issue.

Procedure For Registration Filing of application – Who can make? Filing of complete specification after the provisional specification Preliminary scrutiny of the documents Publication of application after 18 months Early publication on specific request Examination Opposition to the application

– Pre-grant and post-grant opposition Grant and sealing of patent Submission of typed copy of specification Publication in the official journal

Patent Procedure

Patents…

Relatively expensive to obtain Initial filing ~$8,000 - $12,000Prosecution ~ $10,000+

Limited term of protection20 years from filingonce it dies, it’s dead

Commercial BenefitsExclusivityMonopoly PricingLicensing

Patents- Duration

20 years from filing

once it dies, it’s dead

but:

– continuation-in-part applications

Selecting what to Patent?

Business Value:What is the likely value of the technology?Will exclusivity provide a competitive advantage?Does the technology align with your commercial products?

Legal Strength:What is the novelty over prior art?Business Methods?

Exclusivity:Will competitors have viable design-around options?Can infringement be detected?

Patent Strategy - Benefits from Patents

Monopoly PricingIncrease profit margins through exclusionary power

Extra IncomeGenerate income through licensing activities

Access to TechnologyCross-license to access other technologies

Business AssetCan be used to assist in securing funding or obtaining desired exit valuations

Marketing ToolChilling effect on competitionDemonstrated expertise in a particular field

Patent StrategiesAggressive/Licensing strategy

Patent everythingExpensive up front, but ensures that you cover everything and eventually provides a revenue stream.

Blocking strategyPatent technologies your competitors might useModerate costs but provides essential protection and cross-licensing opportunities if you can identify the key technologies.

Defensive strategy Only patent key technologiesLower initial costs, but you risk missing key technologies.

Dealing with a Competitor’s Patents

The right to ExcludeA patent gives the owner the right to exclude others……but a patent does not grant any affirmative rights

Blocking PatentSomeone else might have a dominant patent

Freedom to OperateKnowledge of potentially problematic patents may give rise to an affirmative duty to determine whether or not your product infringesLegal opinion-of-counsel

Damages for Infringement

Injunction

Lost Profits

Reasonable Royalty

Cost of Litigation- $2M+ if case goes to trial

Example: Apple

Patented Technology…

Apple holds over 7,000 patents

Data Processing Technology

Computer Test Technology

Computer Input Technology

Programming orControl Technology

Control of Peripheral Devices

Technology

Patented Technology…Apple has >200 Patents related to Multi-Touch Technology

Input Technology

Visual Indicators Technology