Weaving Intellectual Property Rights in
Creativity, Knowledge Creation, Innovation and
Commercialisation
Prabuddha Ganguli
MHRD IPR Chair Professor
Tezpur University, Assam
and
CEO
“VISION-IPR”, Mumbai
prabuddha.ganguli@gmail.com
TAA-JRD Tata Lecture
TIFR, Mumbai, India
28-07-2014
pganguli©1998-2014
Government
Agencies
Enterprises
Inter &
Intra
networking
Funding Agencies,
Financial institutions
Academic
Institutions
Inter and
intra networking
R&D
Institutions
VENDORS
Global Symbiotic networking
….possible??
pganguli©2001-2014
pganguli©2001-2014
pganguli©2001-2014
pganguli©2014
Collapsing of innovation cycle times
crashing of products and services life cycles
pganguli©2001-2013
IPR
Institutional Asset
pganguli©1998-2014
pganguli©2014
Perceptions vs Reality
– Four Blindfolded Men who
encountered an elephant and said
“The elephant
is like a wall”
“The elephant is
like a snake”
“The elephant
is like a
pillar”
“The elephant
is like a rope”
pganguli©2001-2014
Balancing of Interests
Promoting
Private
Producer
Disclosure
Public
User / Consumer
Rights
Obligations
Monopoly
Competition
“Private Interest Must Yield Public Good”
pganguli©1998-2014
pganguli©2001-2011
LAYOUT DESIGNS FOR
INTEGRATED CIRCUITS
COPYRIGHT
ANTI COMPETITIVE
PRACTICES IN
CONTRACTUAL
LICENSES
pganguli©1998
Invention Facilitator…..The Patent Framework
“Before [the patent regime], any man might instantly
use what another had invented; so that the inventor had
no special advantage from his own invention. The
patent system changed this; secured to the inventor, for
a limited time, the exclusive use of his invention; and
thereby added the fuel of interest to the fire of genius,
in the discovery and production of new and useful
things.”
Abraham Lincoln
Abraham Lincoln, second lecture on discoveries and inventions, delivered to the Phi
Alpha Society of Illinois College at Jacksonville, Illinois, February 11, 1859 in Vol. III The
Collected Works of Abraham Lincoln, Roy P. Basler ed. (New Brunswick, N.J., Rutgers
University Press, 1953) p 363. Available at http://quod.lib.umich.edu/l/lincoln/
pganguli©2014
Trademarks
Sumitomo Rose Scented Tyres
pganguli©2014
Design Registration for Packaging of Shrimps
pganguli©2001-2013
Subject matter for
Industrial Design Registrations
pganguli©2001-2014
TRADITIONALPOCHAMPALLY IKAT SILK SAREES …..GI
pganguli©2009-2013
pganguli©2001-2014
PATENTS..........
INFORMATION AND KNOWLEDGE MINE
BIBLIOGRAPHIC
TECHNICAL
LEGAL
pganguli©1998-2014
PATENTS AS
INFORMATION AND KNOWLEDGE SOURCE
• STRATEGIC PROTECTION, RAISING BARRIERS FOR THE COMPETITORS &
ENSURING FREEDOM TO USE INVENTIONS
* TECHNICAL IFORMATION & KNOWLEDGE
* MONITORING TECHNOLOGY TRENDS
* IDENTIFYING EMERGING RESEARCH AREAS
* SPOTTING BUSINESS OPPORTUNITIES
* TOOL TO IDENTIFY POTENTIAL OPTIONS & THREATS
* TOOL TO IDENTIFY POSSIBLE COLLABORATORS, MERGERS OF EFFIRTS,
STRATEGIC ALLIANCES BASED ON TECHNOLOGICAL & GEOGRAPHICAL
STRENGTHS. BUSINESS PARTNERS
NOTE: Useful both in Business & Research
pganguli©2001-2014
Are Patent Databases “Open Sources”
that can be used freely ??
• Patent Databases are most structured “open
source” for technical information and knowledge
that is accessible in the most facile way on the
net which can be used freely.
• Patent information and knowledge can be used
for research and technology development
• However if the knowledge claimed in valid
patents are used for commercially exploitation in
subsequent inventions by others, then certain
legal processes have to be followed to ensure
“freedom to operate”.
pganguli©2014
ANI Patent Portfolio
US 062697
US 8003165
US 6692574
US 6479939
US 6582780
US 6664728
US 6630023
US 7791258
US 6885022
US 7696272
Nanomaterials
US 6897603



US 6613204
CNT Composites
Thermal Management
Nanoparticles
US 6975063
US 7611906
US 7057203
US 7563722
US 7070651
US 7560134
US 6310432
US 6296740
US 7195938
US 6312303
US 6432206
US 7531155
US 7244513
US 7514369
US7462498
pganguli©2012
ANI Patent Portfolio
US 6580225
US 7960718
US 6181056
US 6573643
US 6588909
US 7854861
US 6726335
US 7842522
US 6750461
US 7176877
Nanoelectronics
US 7125308



US 6819034
Nanoparticle Inks
Nanoparticle Pastes
Exclucent™ materials
US 7078716
US 6819035
US 7057758
US 6849856
US 7040948
US 6933670
US 6504311
US 6084338
US 6979947
US 7011927
pganguli©2012
US 6572232
US 6552563
US 6573643
US 7736209
US 7728520
US 7462498
US 6411020
US 6577355
US 6417686
US 6586889
US 6213837
US 6616284
US 7306896
US 6204834
US 6629869
CNT Electron Emission
 Electron Emission
Activities
 CNT Display
Applications
US 6635986
US 6107732
US 7057578
US 6664722
ANI Patent Portfolio
US 6975063
US 6739932
US 6111354
US 6798127
US 6127773
US 6008595
US6777869
US D422575
US 6854850
US 6958576
US 6064148
US 6441543
pganguli©2012
US 7950271
US 6849911
US 7695609
US 7782462
US 7104111
US 7821412
Nanosensors
 Metal Nanoparticle Sensors
 Enzyme coated Carbon
Nanotube Sensors
 Sono Photonic Sensors
 Ion Mobility Sensors
US 7237429
US 7762121
US 7674628
US 7287412
US 7647813
US7452735
US 7575720
US 7632548
ANI Patent Portfolio
US 7597788
pganguli©2012
Growth of Nanotechnology Patents, 2000, 2002, 2004.
[Source: Clarkson G, DeKorte D (2006) The Problem of Patent
Thickets in Convergent Technologies. Annals of the New York
Academy of Sciences 1093:180-200].
pganguli©2012
Some Options for the IP proprietor
• Use the IP … manufacture the product, use the process, sell by
self or by contracting it to another party.
• Rent (licence) the rights to someone for manufacturing but
market the product by self or by contracting it to another
party.
• Cross License for mutually independent working and / or
collaborative working
• Sell (assign) the IP Rights
• Set-up a Joint venture with appropriate benefit sharing
arrangements.
• Source of one-time or steady long term income from the
license fees/royalties
• Negotiate License for manufacture by and /or marketing with
geographical breakup of the markets.
pganguli©2001-2014
Some Options available to the IPR Holder
• Barter rights
• Establish a franchise system involving other
parties
• Take action against those who infringe the
IP
• Let the rights selectively lapse in certain
countries
pganguli©2001-2012
Inspiration or copying???
Knock Out a product of inspiration or a
copy of Phone Booth
Knock Out, starring Sanjay Dutt, Irrfan and Kangna Ranaut faced allegations
of being an outright copy of Phone Booth starring Colin Farrell.
The first case was filed by 20th Century Fox just before Knock Out was about
to be released. At that time, the court had passed an injunction against the
release after watching both the films.
On appeal, the producers were allowed to release the film, subject to them
having deposited R 1.5 cr with the court
The matter was heard again and the court has decreed the case and awarded
Rs 1.25 cr to Fox.
The producers of Phone Booth were also not permitted to exploit their film in
any manner whatsoever from March 5, 2013 onwards.
pganguli©2014
Krazzy 4 ….copied portions of jingles
created by Ram Sampat
Sampath filed a case against the film's producer,
Rakesh Roshan, and music director, Rajesh Roshan,
stating that he was not given due credit for Krazzy
4's music. His name was not mentioned on Krazzy
4's audio CDs, and that's the reason he sought legal
action and filed a case of copyright infringement.
The court instructed the Roshans to delete two
songs, Krazzy 4 and BreakFree, if they want to
release the film on April 11, 2008.
pganguli©2014
Krazzy 4 contd.
The Judge who listened to both Sampath's work for a Sony Ericsson cellphone
advertisement, and the two songs composed by Rajesh Roshan for the film
stated: "To my untrained ear, the music (in two works) appeared to be similar"
The judge held that though the advertisement jingle was only for a few seconds,
it was the 'catch phrase or hook phrase' that was repeated in the songs.
The court also stopped the sale of film's audio CDs and cassettes containing the
two songs as well as the ringtones based on these songs.
The judge observed that Sampath had proved 'prima facie that musical work in
two songs in Krazzy 4 and their remixes were a copy of the work in the
advertisement' for Sony Ericsson.
Finally there was a out of court settlement with payment of Rs 2 cr to Ram
Sampat
pganguli©2014
Law has always been challenged
by Technology
Law gets amended from time to
time to accommodate technology
change and societal needs
pganguli©2001-2014
Some Landmark US Judgements
Diamond v. Chakravarti
(in a matter dealing with biotechnology;
447 US 303 [1980])
Diamond v. Diehr
(concerning patenting of computer related inventions;
450 US 175, 209 USPQ97 (1981))
State Street Bank & Trust Co v. Signature Financial Group
(related to patenting of business methods;
47 USPQ 2d 1596 [Fed. Cir.1998],
cert. Denied (US 1999 No. 98-657)
 Silhoutte International Schmredgesellschaft mbh & Co v.
Hartlauer Handelsgesselschaft mbh
( related to parallel imports; 1998 in ECJ)
A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001),
affirming, 114 F.Supp.2d 896 (N.D. Cal. 2000).
Association for Molecular Pathology v. Myriad Genetics,
569 U.S. 12-398 (2013) Decision on June 13, 2013
pganguli©1998-2014
Realisable Value of IP to Potential Value of IP
Knowledge Economy (E) ~fn [mind
(M).concepts (C1 ).commercialisation(C2)]
Product Business Life
IPR Portfolio
Competitive sustenance
Management
Protection
Market acceptability
Valuation
Marketable Products/Processes
Transactions
FTO
Alignment with market
Enforcement
Seeking Regulatory Clearances
Validity
marketable probables
Challenges
IPR Cliffs
Crystallisation to tangibles
Responsible Use
Proof of concept
Ideas
Narrowing options
Position in the protected To
Realisation
Knowledge grid
(Marketing
idea conception
Tangibles)
time
Value
maximisation
to Business,
Markets, Society
pganguli©2001-2014
Product Lifecycle
Managing IPR Portfolio
Monitoring IPR
Policing IPR
Enforcing IPR
OUTPUT

INNOVATION
PROCESS

CONCEPTS
Fit in IPR Portfolio
Transacting IPR
Exploring Tech transfer
IPR Landscaping
Exploratory
Filings/Registrations
Strategy for IP
Foreign Filings
Licensing Options
Joint Developments
Exploring Tech Transfer

Managing Intellectual Property Rights
MARKET
Record Maintenance & Updating IPR Information
pganguli©2001-2014
Beware !!!!
pganguli©2001-2014
TODAY in Transition
YESTER Times
R&D and Business
TOMORROW and
The Day After
Tailoring for tomorrow
 Co-Production of Upstream Knowledge and Concurrent Transfer thereby Blurring of boundaries
and collapsing of timelines for knowledge bridging and integration
 Search for knowledge tributaries and development of commercialisation distributaries, and /or
networking in clusters for optimized use of global knowledge base
Intra-Enterprise resources
Extra-Enterprise inputs / cross institutional collaborations
Organisational frameworks for rapid conversion of ideas to marketables
 Dynamic equilibrium in working between “For Profit” and “ Not for Profit Institutions”
 Quantification of Knowledge Ownership and formalised benefit sharing between partners
…..IPR Management (creation and transaction) will hold the key
Pre-competitive cross industry consortia for cooperation in knowledge creation between competing
stake holders with mutual understanding for exclusivity in commercial use.
Regulatory frameworks to oversee anticompetitive practices
Timely Technical
Support
In Legal Proceedings
INSTITUTIONAL
IPR
AWARENESS
POLICING IPR
PORTFOLIO
TRACKING COMPETITION
IPR monitoring
Planning oppositions,
blocking moves, etc.
Facilitating
New Business
Institutional
IPR
Gateway
TECHNOLOGY TRANSFER
CHECK POST
Agreements / Contracts
Negotiations / IP Transactions
Clearance for use
FTO Reports
WINDOW TO IPR
INFORMATION
IN PROJECT TEAMS
Research Proposals
Identify innovations
Appropriate IPR protection
Publication clearance
GATEWAY
Attorneys
IPR Authorities
National/International
agencies
pganguli©2001-2014
…...Several Science and Technologies
getting orphaned due to non availability of
funds to progress IPRs on global scale
…….inadequate infrastructure,
management skills, negotiation acumen,
inadequate venture capital culture
………...No clout to negotiate due to
fragmented research approaches
……..lack of patent information base
search skills, avoiding of “reinventing the
wheel”
pganguli©2001-2014
…...What are the safeguards that
products of nature are not getting into
the IPR domain
…….What are the safeguards that
standards setting is not getting linked
to IPR and private ownerships?
……..Will prices of products and
services go up due to IPR protection?
………Will investors put in their money
if there is no proper IPR Protection?
pganguli©2001-2014
…Social cost of granting wrong
patents
…….high cost of litigation
…………when is traditional knowledge
legitimate prior art
and under what circumstances should
it be considered as socio-piracy?
……..Is the IPR System only for the
rich??
pganguli©2001-2014
Are IPR led innovators and Society
Non Convergent in thought and deed?
pganguli©2001-2014
Are they both going wrong somewhere???
Is a convergence possible?????
pganguli©2001-2014
Where there is a will, there is a way!!
pganguli©2001-2014
Books and edited volumes in IPR by the Author
•
•
•
•
•
•
•
•
“Gearing up for Patents – The Indian Scenario” P. Ganguli; Universites Press
(India) Ltd. Hyderabad, India, (1998) (Associate of Orient Longman)
“Intellectual Property Rights … Unleashing the Knowledge Economy”
P. Ganguli; Tata McGraw Hill, India (2001)
IPR manual titled “Shaping the Future” , P. Ganguli, designed for the Indian
Machine Tools Industry… a project sponsored by UNIDO and jointly worked
with WIPO was released as a joint publication of UNIDO-WIPO-IMTMA in
August 2005
Guest editor, P. Ganguli, of the September 2005 Special Issue on “Technology
Transfer with IPR” of the Journal of Intellectual Property Rights published by
the Council of Scientific and Industrial Research, India
Co-edited a volume titled “Technology Transfer issues in Biotechnology”, P.
Ganguli, Dr Ben Prickril (France) and Dr Rita Khanna(USA) published by
Wiley-VCH(Germany) in 2009
“Geographical Indications……its evolving contours” was released on the
internet for free download from www.iips.ac.in on July 18, 2009
“Nanotechnology Intellectual Property Rights….Research, Design, and
Commercialization”, P. Ganguli and S.Jabade, CRC Press (Francis and Taylor
Group), USA, June 2012
Notice
• All the slides in this presentation are original works of the author
during the period 1998 to 2014
• The copyright to these slides belong to the author
• These slides may be used for educational purposes with proper
reference to the author and details provided in the title slide of this
presentation
• Any other uses of these slides than what is indicated should be done
only with the prior permission of the author.
Professor Prabuddha Ganguli
prabuddha.ganguli@gmaiil.com
pgang@mtnl.net.in
Mumbai, India, 28.07.2014