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Dr. D. R. Agarwal, Director Dr. D. R. Agarwal, Director

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1 Dr. D. R. Agarwal, Director Dr. D. R. Agarwal, Director 11 th May, 2009 ITAG Business Solutions Ltd. IP Policies & Its Framework for foreign companies in India Venue: Australian High Commission, New Delhi, India

2 Intellectual Property is the creation of human mind and may be any ideas or innovation expressed in the form of invention, design or an art or a literature or a song or music. Once an IP is protected through the process of law, it takes the character of Intellectual Property Rights (IPR) and its ownership is as good as the ownership of physical property and is fit for legal transfer for gain. It needs to be managed as any other forms of wealth management. What is Intellectual Property (IP)?

3 IP LEGISLATIONS IN INDIA The Copyright Act, 1957The Copyright Act, 1957 The Patents Act, 1970 (only process patents in foods, pharmaceuticals and agrochemicals)The Patents Act, 1970 (only process patents in foods, pharmaceuticals and agrochemicals) Amendment (effective 1995); introduction of Mailbox applications and EMRAmendment (effective 1995); introduction of Mailbox applications and EMR Amendment (effective 2003); compliance with TRIPS requirements (patent term etc.)Amendment (effective 2003); compliance with TRIPS requirements (patent term etc.) Amendment (2005) to introduce product patents in all fields of technology including food, drugs and agrochemicals.Amendment (2005) to introduce product patents in all fields of technology including food, drugs and agrochemicals. The Trade Marks Act, 1999The Trade Marks Act, 1999 The Geographical Indications of Goods (Registration and Protection) Act, 1999The Geographical Indications of Goods (Registration and Protection) Act, 1999 The Designs Act, 2000The Designs Act, 2000 The Semiconductor Integrated Circuits Layout-Design Act, 2000The Semiconductor Integrated Circuits Layout-Design Act, 2000 The Protection of Plant Varieties and Farmers’ Rights Act, 2001The Protection of Plant Varieties and Farmers’ Rights Act, 2001 The Biological Diversity Act, 2002.The Biological Diversity Act, Trade secret : Indian Contract Act, 1872Trade secret : Indian Contract Act, 1872

4 TRADE SECRETS INTEGRATED CIRCUIT INDUSTRIAL DESIGNS PATENTS GEOGRAPHICAL INDICATION TRADEMARKS COPYRIGHT IP IP AS AN ECONOMIC ASSESTS

5 Intake and Exit Written policies /procedure s reusage and disclosure s Third-party & other compliance obligations Physical Security Data security & Integrity assurance Corporate Culture Employme nt & third party agreement s: NDAs etc. Confidentiality marking practices on memorandum, s, business plans, technical papers, log notes Previous related-sector employment Background checks Badges (levels); sign-Ins; Accompanied visitors; restricted areas Plant, office, Infrastructur e security measures Training Pre-existing IP rights and obligation Termination Certification Employee access to confidential information Document retention, repository, management and destruction practices Inventory, disposition and permissions laptops, storage media, data transmissions ( s etc) CO-LO, VPN, hosting, data storage, ISP and related agreement IT best practices:Encrypti on; intrusion and change detection; real-time auditing memory dumps; back ups TRADE SECRETS

6 VALUE OF MOST COMPANIES IS INTANGIBLE Components of the S&P 500 Market Value Year Values in % Source: Ocean Tomo

7 IP Management Cycle Creation Management Exploitation Impact R&D Acquisition Joint Venture Identify Evaluate Perfect/Maintain Re-Evaluate Put to Work License Collaborate Assign Trade Adds to Revenue Increases StockPrice AttractsInvestors /Customers Holds offCompetitors Internal INTELLECTUAL PROPERTY MANAGEMENT CYCLE

8 IP managemen t Issues Timing Identification / Inventory Maintenance Liability Ownership Commerciali zation 1. Live/Abandoned Pending Issued 2. Acquired or Licensed 3. Potential R & D or A & D i) Patent & Prior art Mapping & analysis ii) In-House; Contractor; Design/Manufacture b) Invention Disclosure, Polices & Procedures c) JV patent pools, standards d) Strategy; Publish/Trade Secret/File; Jurisdiction; Country Selection a) File in use within one year of public or commercial use or disclosure b) Ready for patenting c) File Prior to any Disclosure for International Patent Protection a) M & A/ Licensing due diligence b) Securitizations c) NDAs, non-competes & other commitments d) Assignments/chain of title a) Usage on Collateral & product b) Fees i) Domestic / International a)Infringement monitoring in & out b) Contract & commitment tracking c) Clean room practices d) Training a) Direct Sales/Reseller/VAR/OEM/Co- marketing b) Licensing In/Out/Cross/ Stacked i) Valuation/Royalty/Calculation c) Revenue/Royalty/Tracking i) Auditing/QC VARIOUS IP MANAGEMENT ISSUES

9 University activityOther acivities control IP Management IP management controls other activities TeachingInformation provided during teaching (e-learning) may infringe others’ copyright and other forms of IP lead to the litigation Teaching materials should not infringe IP and that students are educated about IP management ResearchIP generated needs to be identified,evaluated and protected. If used for commercial purposes, may infringe others’ IP and may expose the university to litigation It is necessary to ensure adequate records are kept to comply with future requirements for securing IP, Research work should not be used for commercial purpose. PublicationMay infringe others’ IP & expose the university to litigation (electronic publication) Electronic publication raises copyright issues about which staff will need to be informed Cross-cutting aspects of IP management

10 Different forms of IP PatentsConfidential Information Copy Rights Design Rights Trade marks In House Research information experimental results or data from out side research paper publications Publishing or presenting research, academic or technical papers Industrial design projects & Contract research Consultancy projects Starting discussions on a collaborative project or contract research Giving out confidential information Using & Developing computer software Revising or providing a manual or computer assisted drawings Activities University Activities & IP 9

11 Total Patenting activity in India ( ) No. of Patents Filed No. of Patents Examined No. of Patents Granted Year No. of Patents The number of patents granted and the number of filed applications have gradually increased from the year 2005 to the year Source: Intellectual Property Office, India

12 Global Technology wise PCT Filings Source: WIPO Statistics Database

13 PCT International application filing Trends

14 IP Infringement, Counterfeiting, Enforcement & Remedies IP Enforcing Agencies 1. Police 2. Custom 3. Judiciary Critical Areas of IP Critical Areas of IP 1. Legal Framework 2. Administration 3. Enforcement

15 MAIN EFFECTS OF COUNTERFEITING AND PIRACY can impact negatively on innovation and growthcan impact negatively on innovation and growth may reduce employmentmay reduce employment can reduce foreign direct investment (FDI)can reduce foreign direct investment (FDI) damages sales volume, profits, brand value and capitalisation of rights’ owners, and can lead to potential legal liabilitydamages sales volume, profits, brand value and capitalisation of rights’ owners, and can lead to potential legal liability can negatively affect consumer confidencecan negatively affect consumer confidence reduce tax revenues to governmentsreduce tax revenues to governments induce high costs on governments and industry to combat C&Pinduce high costs on governments and industry to combat C&P encourages participation by organised crime and can be the cause of corruptionencourages participation by organised crime and can be the cause of corruption Counterfeiting and piracy…

16 COUNTERFEITING AND PIRACY Counterfeiting and piracy is a significant and growing problem that can affect in every sector of industry to promote and protect of IPCounterfeiting and piracy is a significant and growing problem that can affect in every sector of industry to promote and protect of IP Counterfeiters are well organised and adept at establishing distribut ion channels, and this encourages the participation of organised crimeCounterfeiters are well organised and adept at establishing distribut ion channels, and this encourages the participation of organised crime The infiltration of legitimate supply lines, and the potentially harmf ul effects of many products is of growing concernThe infiltration of legitimate supply lines, and the potentially harmf ul effects of many products is of growing concern The very damaging effects on consumers, rights holders and govern ments are now beyond disputeThe very damaging effects on consumers, rights holders and govern ments are now beyond dispute More priority, co-operation and information collection is necessary to better understand and deal with these problemsMore priority, co-operation and information collection is necessary to better understand and deal with these problems

17 IP ENFORCEMENT IN INDIA Unambiguous definitions of rights and their infringementsUnambiguous definitions of rights and their infringements Civil remedies for all IPRsCivil remedies for all IPRs Criminal remedies for most IPRs including patents, copyrights and trade marksCriminal remedies for most IPRs including patents, copyrights and trade marks Mandatory minimum and maximum penalties and imprisonmentMandatory minimum and maximum penalties and imprisonment Powers to police to search and seizurePowers to police to search and seizure Customs have powers to detain infringing goods.Customs have powers to detain infringing goods.

18 Define clearly the rights and their infringement in the lawsDefine clearly the rights and their infringement in the laws Prescribe deterrent civil and criminal remedies including fines and imprisonmentPrescribe deterrent civil and criminal remedies including fines and imprisonment Ensure fair, equitable, simple, affordable, speedy and transparent enforcement procedures.Ensure fair, equitable, simple, affordable, speedy and transparent enforcement procedures. Set in place a modern judicial system with authority to issue injuncti ons, order search and seizure, sanction payment of damages and disposal of infringing goods outside normal channels of commerce and tradeSet in place a modern judicial system with authority to issue injuncti ons, order search and seizure, sanction payment of damages and disposal of infringing goods outside normal channels of commerce and trade Set up border measures to prevent entry and exit of infringing goods.Set up border measures to prevent entry and exit of infringing goods. EXPECTED ROLE OF GOVT. OF INDIA

19 Administrative action custo m Act 1962 Intellectual Property Rights (Imported Goods) Enforcem ent Rules 2007 Remedies Civil ActionCriminal Actions Infringement & Passing off Falsification Temporary Injuncti on Order for civil Search & Service Damage / share of profit Costs Criminal Complaint Results Search & Seizure of goods Arrest of persons inv olved Imprisonment & File Remedies of IPR Enforcement in India (General)

20  IPR (Imported Goods) Enforcement Rules, 2007 notified on  prohibit import of goods infringing IPRs of the right holders under the Copyright Act, 1957, the Trade Marks Act, 1999, the Patents Act, 1970, the Designs Act, 2000 and the Geographical Indications of Goods (Registration and Protection) Act,  lays down procedure for registration of a notice with the Customs b y right holders and the conditions for such registration, etc. NEW INITIATIVES: BORDER MEASURES

21 PROACTIVE IPR AUDIT / DUE DILIGENCE Periodic, systematic and effective audit of IP portfolio leads to effective resultsPeriodic, systematic and effective audit of IP portfolio leads to effective results Scope of audit depends on size, extent, nature and management philosophy for IPRScope of audit depends on size, extent, nature and management philosophy for IPR Areas to be covered:Areas to be covered: Trademark - registration, renewals, licenses-inbound and outbound, infringement, regular search, common law and registration notice usa ge etcTrademark - registration, renewals, licenses-inbound and outbound, infringement, regular search, common law and registration notice usa ge etc Patents - IDFs, filings, prosecution, registration, renewals, recordings of date and movement, prior art search, validation claim, litigations- claim etcPatents - IDFs, filings, prosecution, registration, renewals, recordings of date and movement, prior art search, validation claim, litigations- claim etc Copyright - registration, structuring of employment and consultancy complete assignment, proper notices etcCopyright - registration, structuring of employment and consultancy complete assignment, proper notices etc Trade secrets - assessment of security precautions, need to know basis rule, codification and classification, documents storage and access control rules, external communication policy etcTrade secrets - assessment of security precautions, need to know basis rule, codification and classification, documents storage and access control rules, external communication policy etc

22 Evaluating existing rights vs. emanating new technology for potential financiersEvaluating existing rights vs. emanating new technology for potential financiers Taking up position as member of the board as an advisorTaking up position as member of the board as an advisor Prevent people from doing stupidities; saving moneyPrevent people from doing stupidities; saving money Assisting in developing cost-effectivenessAssisting in developing cost-effectiveness Sharing experiences obtained in other fields of technologySharing experiences obtained in other fields of technology Representing continuityRepresenting continuity In-depth knowledge of the true nature of patent rightsIn-depth knowledge of the true nature of patent rights HOW TO DEVELOP AND IMPLEMENT IPR STRATEGY “Turning Information into Knowledge”; readily implemented into practice for Developing and Implementing IPR Strategies

23 “It is not the strongest of the species who survive, nor the most intelligent, but those who are most adaptive to change…” -Charles Darwin Darwinism Who will Survive?

24 83/1 Beliaghata Main Road, Suite # 1C&1D, 1 st Floor, Subham Plaza Kolkata – , West Bengal, India Dr. D. R. Agarwal Director ITAG Business Solutions Ltd. Intellectual Property Consultants 83/1 Beliaghata Main Road, Suite # 1C&1D, 1 st Floor, Subham Plaza Kolkata – , West Bengal, India


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