36th National Convention of Company Secretaries
Safeguarding Innovation:
Management of Intellectual
Property Rights
7th November 2008
HIMANSHU W. KANE
Advocate & Solicitor
What is Intellectual Property ?
THE “ RING FENCE ” OF IP
Kodak
•
Brand name
- Trademark Act
• Packaging
- Copyright Act
• Camera Body
- Designs Act
• Logo
- TM & Copyright Acts
• Literature
- Copyright Act
• Improved Shutter
-
Patent Act
• PCB’s
-
Inte. Cir. Layout Des. Act
• Film Coating Process -
Protection of Confi. Info
TYPES OF IP PROTECTION
Type
Covers
Rights
Terms
Examples
Patent
Product, Process
Inventor
20 years
Copyright
Expression of
Original Work
Author,
creator
Author’s life +
60 years
Books, software,
music, picture
Trademark
Any mark capable of
being represented
graphically
First User
10 years
(renewable)
Logo, Device etc.
Design
Features of shape,
configuration,
pattern of any
article
Designer
10 years
5 years)
Rug, cutlery
Integrated
Circuit
Topography
Integrated 3D
design in semiconductors
Designer
10 years
Custom chips
GI
Mark indicating an
origin from specific
geographical
territory
Registered
Proprietor,
Authorized
User
10 years
(renewable)
Kolhapuri
Chappals,
Champagne,
Basmati Rice
Trade Secrets
A secret information
having commercial
value
Holder of the
Secret
Indefinite
Secret sauce,
coca-cola recipe
(+
GROWING RELEVANCE OF
I.P. ASSETS
PARADIGM SHIFT IN CREATION OF
WEALTH
•LAND BASED
INDUSTRY &
SERVICE BASED
• TRADITIONAL CORPORATE
ROADBLOCKS SMOOTHENED
CENTRALITY OF AN “IDEA”
A CORPORATE IS EITHER:

AN I.P. CREATOR

AN I.P. DEPENDANT

A STRATEGIC MIX

A NON-IP PLAYER
IMPORTANCE OF IPR
•
NEED OF THE DAY
•
CREATES NEW FENCES
•
UNLIMITED SCOPE FOR SECURING PROPERTY
RIGHTS
•
DIVERSE SKILL SETS CAN
WEALTH CREATION
•
CONSUMERISM & NEED FOR PRODUCT
DIFFERENTIATION
•
IP EASES PRESSURES ON MARGIN
PARTICIPATE IN
SOME STATISTICS
Mkt.Cap v/s BV
$ bn
244
116
'05 Mkt. Cap
56
'05 BV
35
Nokia
57
104
IBM
67
Microsoft
103
Coke
500
450
400
350
300
250
200
150
100
50
0
BRAND VALUATION 2008
Different types of Marks
Label
Name
Device
Word
Signature
DEGREES OF DISTINCTIVENESS
(a) coined/fanciful/invented;
(b) arbitrary;
Good
(c) suggestive;
(d) descriptive/laudatory;
(e) generic/deceptive;
Bad
Unconventional Marks – Smell & Sound


“SMELL OF FRESH CUT GRASS” GRANTED
FOR TENNIS BALLS.- OHIM APPLICATION NO.
428.870
Lion’s Roar is registered
in US
WHAT IS COPYRIGHT?

It is an exclusive right to copy.
Copyright subsists in..


Original literary, dramatic, musical & artistic
works;
Cinematographic films &
Sound recordings
COPYRIGHTS
Range Of Copyright Protection
Product Packaging
Paintings
Drawings ( maps,..)
Photographs
Computer Software
Lyrics, Music
Performer’s Rights
Scenic Arrangement
Sculpture
Engravings
Architectural Works
Research Papers
Choreographic work
Database
SOME IMPORTANT CONCEPTS
-
-
REGISTRATION OF COPYRIGHT NOT A
PRE-REQUISITE
CREATION MUST BE INDEPENDENT
COPYRIGHT SUBSISTS IN AN
IDENTICAL WORK
NO COPYRIGHT IN IDEAS,
THEMES,PRINCIPLES
TERM OF THE COPYRIGHT : LIFE + 60
YEARS
AUTHOR’S MORAL RIGHTS
INDUSTRIAL DESIGN…
• Industrial designs are compositions of lines or
colors or any three-dimensional forms which give
a special appearance to a product
• They protect the ornamental or aesthetic aspect
of a product (not functional)
• Exclusive rights: Right to prevent others from
applying (making, selling or importing) the
protected design to commercial products for a
period of 10 to 25 years (Estonia: 25y)
WHAT KIND OF
INFORMATION QUALIFIES
AS A TRADE SECRET ?
Three essential legal requirements:
1. The information must be secret
2. It must have commercial value because it’s
secret
3. Owner must have taken reasonable steps
to keep it secret
A Secret Is Like An ICE-CUBE
“ Give it to somebody
with a refrigerator &
you still have an icecube --- give it
somebody who has no
refrigerator & you
soon have a pool of
water which nobody
wants
Like an Ice-Cube - a TS is inherently perishable
Characteristics of a Trade
Secret






Concept of ‘sufficiently developed’
No necessity of Novelty
Inventiveness not a pre-requisite
Important requirement => SECRET
Exercise of Skill and Effort
Desire of Confidentiality
TRADE SECRET SUBSISTS IN…
Business plans & strategies
 New product names
 Financial projections
 Marketing plans, unpublished promotional
material
 Cost & pricing information
 Sales data
 Customer lists
 Info : new business opportunities
 Personnel performance

How are Trade Secrets Lost
Reverse engineering, independent
discovery
 Improper licensing
 Burglaries by professional criminals
targeting specific technology
 Network attacks (hacking)
 Laptop computer theft
 Inducing employees to reveal TS

How to Protect TS?






Identify Trade Secrets
Develop a Protection Policy
Restrict Access
Mark Documents
Maintain Computer Secrecy
Measures for Employees and Third Parties
How to Protect Trade Secrets
Continued…







Corporate governance ethos
Work culture
Systems & Procedures
Agreements & Contracts
Corporate goodwill
Periodic systems review
Establishing security levels
What is a Patent ?
A RIGHT
BESTOWED BY THE STATE ,
AND WHICH RIGHT
WHICH VESTS IN AN INVENTION.
A RIGHT TO PREVENT OTHERS
FROM MAKING USE OF AN INVENTION
(NOT AN AFFIRMATIVE RIGHT)



Commercializing innovative products
Example: RING PULL CANS
The inventor licensed the system to Coca-Cola
at 1/10 of a penny per can. During the period
of validity of the patent the inventor obtained
148,000 UK pounds a day on royalties.
APPRECIATING IP
# LINEAR THINKING:
IP AS AN INPUT COST
# NON-LINEAR THINKING: IPR COST AS
HAVING RELEVANCE TO WHAT
CUSTOMER CAN BEAR
# IPR IS 100% RISK DEVELOPMENT
# FROM “SELF-HELP” TO “EARN-IT” ECONOMY
IDENIFYING THE IPRs THAT ARE OF
VALUE TO THE COMPANY’S
BUSINESS
*
RETAINED & DEVELOPED
*
MARKETABLE TO OUTSIDE COMPANIES.
•
NO VALUE
•
DISPOSING OFF, EITHER AS GIFTS OR SELL
•
CHALLENGING COMPETITORS’
•
VULNERABLE, TO BE EASILY COPIED IN THE
MARKET
IPRs.
APPRECIATING IP IN THE
INDIAN CONTEXT
•
MONOPOLY & CONCEPT IN
TRADITIONAL SOCIETY
•
I.P. IN A DEEPLY FRAGMENTED
SOCIETY
•
CONSTANT BALANCING OF
OPPORTUNITIES & REALITIES
•
BRANDS HAVE TO ACQUIRE A
“SOFTER” TOUCH.
APPRECIATING IP…
CONTD.
ARE WE GEARED UP TO HANDLE IP
ASSETS:
• ADMINISTRATIVE MACHINERY
• POLITICAL SUPPORT TO IP
• INDUSTRY MINDSET FROM
REVERSE ENGG. TO “ CREATING
WEALTH”.
PURPOSE OF ACQUISITION
OF IP
• ENSURE R&D RESULTS (OUTPUT)
• SECURE MARKET SUPERIORITY
• ENSURE DESIGN FREEDOM
• INCOME FROM LICENSING
• TECHNOLOGICAL INTRODUCTION
THROUGH CROSS-LICENSING
• SECURE INDUSTRIAL LEADERSHIP
CREATION OF AN I.P.
PORTFOLIO
• RECOGNITION OF I.P. ASSETS WITHIN
ORGANISATION
• CLASSIFICATION & DOCUMENTATION
• VALUATION OF I.P. ASSETS (ONGOING
PROCESS)
• CREATING “FIREWALLS” AROUND IP
ASSETS
• PROVIDING FOR “SPRINKLERS”
CREATION… CONTD.
• SEAMLESS PORTFOLIO MANAGEMENT
• REPORTING SYSTEMS: FEEDBACKS
• INTELLIGENCE GATHERING
• CHARTING ROAD-MAPS
MANAGING IP..
MAKING CORPORATES IP SAVVY
& BUILDING IPR CAPABILITY
• PROVIDING TOP MANAGEMENT
THRUST & SUPPORT
• CENTRALIZING GROUP IP MNGMT. &
CONTROL CENTRE
• PERCOLATING THE IP THEME
• EXPANDING CORPORATE LITERACY
• INCREASING IP SENSITIZATION
MANAGEMENT…..
CONTD.
• MONITORING IP THRUST AREAS &
DIRECTIVES
• SETTING UP EVALUATION COMMITTEES
• CREATING ADMINISTRATIVE SYSTEMS
• RECORD KEEPING
• DEVELOPING LICENSING
OPPORTUNITIES
ROLE OF IP
DEPARTMENTS
• PLANNING & IMPLEMENTATION OF IP
STRATEGY MATCHING A
MANAGEMENT STRATEGY & A
BUSINESS DEV. STRATEGY
• ACTIVITIES TO ACQUIRE PATENTS
• UTILIZATION OF PATENT INFO.
• UTILIZATION OF OWN IP
ROLE… CONTD.
• COUNTERMEASURES CONCERNING
OTHER COMPANIES IP
• PREPARING PROJECT TEAMS FOR
INPUT IN R&D
THANK YOU
W.S.Kane & Co. / Law and Prudence
Merchant Chamber, 6th Floor,
41, Sir Vithaldas Thackersey Road,
Opp. Patkar Hall, Churchgate,
Mumbai, Maharashtra,
INDIA
 91-22-66 14 14 14
 91-22 –66 14 14 15
E-Mail : hwk@wskaneandco.com
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