Intellectual Property-: Protection Management & Risks

Intellectual PropertyProtection Management & Risks Presented by: Nishant Kewalramani Portfolio Manager

AGENDA  Maximizing

IP for Start UpsProtection Strategy

  Cost

Effective ‘Protection Management’ of IP

  Avoiding  

IP Risks

   

PROTECTION MANAGEMENT

Protection Strategy  Do VCs sign non disclosures?   Strategy: Minimum Expense-

Maximum Advantage   Building 

 

a wall around the IP

PATENTS  Identifying core technology   Make,  Use,  Sell,  Offer for Sale and  Import

area

Technology development Identification Aids  Competitor

Watch-

 Constant update on your competitors  Concentrate on big companies  Decides direction of your core

technology



 Landscape

analysis

 A landscape of all patents in a

technology domain



Pre-Filing Filtering  Do



not approach the patent attorney without Homework!!!

 Understanding



patentability criteria for initial filtering purposes.

 To



begin with- you are the best judge of your invention

 Quality



of patents more important than number of patents

Patentability Requrements INVENTIONS Subject Matter Usefulness Novelty Non-obviousness Specification PATENTS

© Brain League IP Services Pvt. Ltd

Provisional Filing  Only

description of the Invention required

  Secures the priority   12 months for filing

date

complete application with claims

  Better

bargaining position

Multiple inventions in one application  Unity of invention   Divisional application

PCT filing  File

PCT instead of Complete if more time required

  31

months to file national phase applications

  More

expensive than a complete filing

Trademark Filing  Not

as expensive as patents



 Choose

a word that catches attention and is ‘not descriptive’ of the goods and services



 Intent

to Use application/ Proposed to Use  Can get registration without use  Can continue to hold rights over the

Copyright Registration  Inexpensive   Long duration of right   Marketing materials, imp

websites etc.

documents,

  Strengthens the wall of protection   Adds value to the entity

Not Disclosing = Protection  Not

important enough/Cannot be covered under any other IP

  No

registration required for Trade Secret Protection

  Maintain

Secrecy- Employee agreements, non disclosure agreements etc.

Decide what to maintain   PCT

Application ≈ Filing in two jurisdictions

  Stronger

portfolio- negotiating advantage



   



IP RISKS

PATENT RISK  Search not comprehensive   Non accessible data   18 month lag   Non patented material

FIRST SALE EXHAUSTION & PARALLEL IMPORTS  Sale- rights over the item exhausted   Import of patented articles from

other countries.   Can

be due to price discrimination

FTO ANALYSIS  Freedom to Operate   Product analyzed against

national

patents   Also known as Patent   18 month lag   Further Limitations in

Clearance.

India

NOTICE- INNOCENT INFRINGER  Notice-

patent with no./patent pending

  Without

patent no. not considered

notice   Damages may not   Flows both ways

be awarded

Trademark Risk  Non registered user has a right   Cannot use anything resembling

famous mark   If

not registered- proving ‘notice’ very difficult

a

OPEN SOURCE- RISK  Open Source Software   May compel you to make

your

improvement free.   Analyze

the kind of conditions attached with the license.

  



THANK YOU 



[email protected]