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RK Gupta, Head, Intellectual Property Management Division Council of Scientific & Industrial Research India Institutional Management of IP -CSIR’s Experience.

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Presentation on theme: "RK Gupta, Head, Intellectual Property Management Division Council of Scientific & Industrial Research India Institutional Management of IP -CSIR’s Experience."— Presentation transcript:

1 RK Gupta, Head, Intellectual Property Management Division Council of Scientific & Industrial Research India Institutional Management of IP -CSIR’s Experience

2 CSIR The largest network of publicly funded Research Labs in the world highly qualified Scientists, Engineers, Auxiliary staff Annual Budget USD 243 million Interdisciplinary and multi-disciplinary R&D in the area of Aerospace, Biological Sciences, Chemicals, Pharmaceuticals, Drugs, Earth Resources, Food, construction, minerals, metals, environment, leather, information products etc

3 CSIR Mission “To provide scientific industrail R&D that maximizes the economic, environmental & societal benefits for the people of India” Serve the Nation

4 IP Credentials of CSIR

5 CSIR Patent filings

6 US Patents Granted to CSIR

7 Major PCT Applicants from Developing Countries(2002 ) RankApplicantCountryNo ( appl) 1Council of Scientific & Industrial ResearchIndia184 Samsung Electronic Co.Rep of Korea184 3Biowindow Gene Development IncChina136 4LG electronics IncChina125 5Huawaei Technologies Co.China84 6Ranbaxy Laboratories Ltd.India56 7LG Chem Ltd.Rep of Korea47 8SAE Magnetics (H.K.) Ltd.China31 9The National University of SingaporeSingapore28 10Philips Electronics Singapore PTE Ltd.Singapore24

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9 % Share of CSIR in the Total US Patents Granted to Indians % %

10 CURRENT PRIORITIES Licensing of IP/PARTNERSHIPS

11 Licensing CSIR’s IP Partnerships M/s Evalueserve, India M-cam Doors, USA Baker-Botts, USA Schweman-Lundberg-Woessmer-Kluth, USA Venture East, India Opportunia, India Other US & European Firms

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13 Protecting Traditional Knowledge TURMERIC Neem Basmati TKDL-TKRC-IPC

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15 Value added TK

16 DNA Fingerprinting Fingerprinting of Herbal Formulations

17 Plant Patents Developing Portfolio on Plant varieties

18 Patenting Herbals An integrated approach Traditional Medicine Modern Medicine Modern Science

19 International Patenting of Bio- informatics Softwares

20 Network with International patent attorneys and Experts Merchant & Gould, USA BTG, UK Birch Stewert, USA CSIRO, Australia Boehmert & Boehmert, Germany Shgruee, USA NIH, USA Arent, USA Foley & Landers, USA

21 CSIR Diamond Jubilee Awards for School Children Objective : To inculcate creativity amongst school children 14 awards given during awards announced during 2003 WIPO Award for front face Braille Reader Carbon Nanotubes using plant based oils

22 IPR The Challenging Global Scenario

23 IPR Challenges in Recent Years Growth in intensity of patenting Patenting of live forms/materials in nature Traaditional/community knowledge, folklore, genetic resources Extension of protection into new areas such as business methods Geographical extension of minimum standards of protection through TRIPS/TRIPS PlUS Sometimes (Data Exclusivity) Patenting Public Sectorwise Knowledge

24 US Companies’ Intangible Assets as a Percentage of Total Assets % %

25 PCT Leaders from India in 2002 CSIR Ranbaxy - 56 Dr. Reddy’s Labs - 19 Orchid Chemicals - 16 Biocon - 10 Avestha gen - 6 Aurobindo Pharma - 5 Lupin - 5 Sahajanand Biotech - 5

26 Dilemma of IP for R&D Organisations IP Asymmetric Arrangement Between state & IP Owners to exclude others from the Use of IP Creates Monopolies and Stiffles Competition Maximize Market Share& Profits Sometimes constrains R&D Publicly Funded Organizations Proliferate widely knowledge & Innovation in Society As non-user maximise benefits to the society Sale/license IP on Non-exclusive basis Stimulate further R&D

27 ELEMENTS OF IP MANAGEMENT POLICY AWARENESS, MOTIVATION & PROMOTIOIN IP MANAGEMENT SKILLS METRICES FOR PERFORMANCE ACQUISITION & PROTECTION AUDIT & VALUATION VALORISATION ICENTIVES & REWARDS BUDGETING & ACCOUNTING MONITORING & REVIEW

28 IP IN CSIR: CHRONOLOGY 1942: Formation of CSIR:APPLIED & INDUSTRIAL R&D-CENTRAL PATENT CELL-INDIAN PATENTS-INDIVIDUAL INITIATIVE-SPORADIC LICENSING OF TECHNOLOG 1970: NEW PATENTS ACT:FLIP TO PHARMA, FOOD & CHEMICAL SECTORS- PATENT UNIT- GREATER AWARENESS CREATION – LABORATORY INITIATIVE- NO 1 POSITION IN INDIA-LICENSING OF TECHNOLOGY INCLUDING PATENTS-SPORADIC FOREIGN FILING:

29 …. Contd 1995: India joins WTO 1998 India joins Paris Convention/PCT 1999 Patent amendment to provide EMR retrospectively from 1/1/ nd amendment in Patents Act TK not patentable Term of Patent – 20 years Deferred Examination 18 months publication process patents for biotech inventions Patent Tribunal Set up at Chennai !st EMR granted 3 rd Amendment discussed

30 …….. Contd 1999 – 2004 Plant Varieties and Farmers Rights Act Passed Designs, TM /Copyright Acts updated and at par with developed world GI Registry Set up at Chennai 150, 000 designations for India under PCT Modernization of Indian Patent Office and its branches Boost to patenting of drugs, pharmaceuticals and bio- tech inventions

31 CSIR IP Policy The precursor for the CSIR initiatives in the IP domain was the articulation of its Intellectual Property Management Policy in The Policy envisaged “The maximization of the benefits to CSIR from its intellectual property by stimulating higher levels of innovation through a judicious system of rewards, ensuring timely and effective legal protection for its IP and leveraging and forging strategies alliances for enhancing the value of its IP”

32 CSIR Vision 2001 It was envisaged that in 2001 CSIR will hold a valuable portfolio of atleast 1000 Indian patents and 500 foreign patents. Could we achieve it?

33 IP Policy Publicly Funded Research (Today) Patent internationally (PCTAs) Publish in High Citation Index Journals

34 STIMULATING INNOVATION INDIVIDUALS CAREER ADVANCEMENT CERTIFICATION FROM CEO MONETARY INCENTIVES: SHARING OF MONIES REALISED Lab Requirement for performance appraisal Competitive pressure CSIR Target setting publicly National expectation

35 Training & skills Documentation Patent search & analysis Techno-legal drafting IP Management Patent informatics Licensing & pricing

36 IP Management in CSIR DG CSIR LABS IPMD IP management structure in CSIR

37 Acquisition & Protection IP CELL IN EACH LAB PUBLICATIONS SCRUTINIZED FOR IP EARLY SPOTTNG OF IP AND ITS CAPTURE ASSESSMENT & FILLING UP OF GAPS PATENT SEARCH AND PRELIMINARY DRAFTING EXAMINING MAINTENANCE

38 ……….. Contd IPMD DISCLOSURE AND PATENTABILITY ASSESSMENT, DRAFTING, FILING, AND PROSECUTION OF INDIAN AND FOREIGN PATENTS FOREIGN PROTECTION WHERE TO PROTECT, ROUTE – ATTORNEYS, MAINTENANCE, POTENTIAL, EXPENSES, DURATION

39 Patent Filing in Different Countries Potential commercial opportunities Product/process life time Alternative protective mechanisms Cost of patenting Defensive/deterrent position with respect to competitors Feasibility of policing and enforcement Potential for trading the patent Publicity/advertisement gains Force competitors to invest in getting “around the patent”

40 Valorisation & Exploitation clustering filling gaps bubble patents Portfolio formation Audit & valuation Forging strategic alliance Licensing/bartering/sale CSIR Lab Agents Enforcement - action against Infringement

41 Patent Portfolio Development Ensures expansion of patent coverage (improvement patents/CIPs) EXTENSION OF TERM (NEW USE/COMBINATIONS) CREATION OF BUFFER ZONE SUROUNDING PATENTS Generation of Bargaining Chips Associated Patents

42 Some Key Portfolios Bio-enhancers Herbal Formulations - anti-diabetic - anti-oxidant - Hepatoprotective - Immunomodulation - Weight Reduction Bio-informatics Products Leather Optical Fibre Drugs & Pharmaceuticals Nanotechnology Polymers Standardization of herbal products

43 COST OF IP PROTECTION Unique strategy adopted for reducing cost of IP protection nationally and internationally CSIR COST - one third of international cost of patenting

44 IP AUDIT Importance of IP Assets ALIGNMENT OF IP ASSETS WITH ORGANISATION’S OBJECTIVES ASSESS COMPETITORS’S ASSETS NATURE OF COMPETITORS’ LANDSCAPE DENSITY NAD PACE LITIGATION LOCAL / FOREIGN LOGISTICS Human resources R&D Financials, manufacturing

45 MONITORING STRUCTURE GOVERNMENT – OVERALL CSIR TARGETS DG, CSIR – LABWISE & CSIR TARGETS IPMD - LABWISE & CSIR TARGETS IPMD - DIRECTOR/IPMC/DIVISION/UNIT/ENGG/SC DIRECTOR – DIVISION/UNIT TARGETS IPMC - DIVISION/UNIT TARGETS /ENGG/SC

46 Reaching the Current Stage Quoted in US as organisation with best practices in IP Management internationally Model for other publicly funded organisations Model for industry Support System for Universities through formal and informal channels Role in impacting national IP Policies Role in formulating Universities’ IP Policies Enquiries for search, examination and Management support from abroad

47 Reaching the Current Stage How ? Training of IPMD Scientists Training of CSIR IP Co-ordinators and scientists by leading US and European patent attorney firms and consultants Experts from Multinationals (Pfizer) Training of about 5000 scientists in patent search, initial assessment of disclosure, preparation of provisional patents and internal evaluation Training of about 500 scientists in patent examination Training of about 200 scientists in valorzation, licensing, arbitration and litigation.

48 THANKS


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