4Consumption Daily 6/29/2004Beijing – 50,000 Counterfeit LV Bags DestroyedThe local Technical Supervision Bureau (TSB) in Beijing destroyed 50,000 Louis Vuitton bags, worthRMB5 million. LV’s agent in China witnessed the destruction of the seized bags.China Intellectual Property News 7/3/2004Guangdong – Biggest Trademark Infringing CaseGuangdong AIC recently released information on a trademark infringing case with an estimated total value of RMB11 million. The infringing products seized were mainly sportswear labeled “NIKE,” “Adidas,” and other brands. Some of the infringing shoes included “NIKE” designs that are scheduled to be launched in 2005.
5Yves Saint Laurent vs. Ralph Lauren In 1970, the French designer Yves Saint Laurent (YSL) created and successfully marketed a long black sleeveless tuxedo-like evening dress, which the YSL fashion house reintroduced in their 1992 collection.Ralph Lauren was selling a similar version of the dress in their 1992 collection.YSL brought suit against Ralph Lauren under copyright infringement, design infringement and unfair competition. May 1994:The court in Paris decided in favor of YSLCourt concluded that YSL owned the 1970 dress design under the law on Designs and Models and also considered the dress design an original copyrighted creation.YSL was awarded damages of FFr 2 million. [50% for copyright infringement and 50% for damages resulting from unfair competition.
6Framework for Societal Governance Balancing of InterestsPrivatePublicProducerConsumerIndustrialized EconomiesDeveloping EconomiesMonopolyCompetition“Private Interest Must Yield Public Good”
13GilletteManufacturers of male and female grooming products, writing instruments and correction products, tooth brushes, oral care appliances, and alkaline batteries.Products include blades, razors, shaving preparations and hair epilation devices among others.Internationally recognised brand names such as BRAUN, PARKER PEN, WATERMAN, LIQUID PAPER, ORAL B, DURACEL….. Flagship Brand .. GILLETTEProducts protected and nurtured by Trademarks in various parts of the world
14Gillette Information source: PRICEWATERHOUSE COOPERS publication “ Valuation of Intellectual Property”
15Managing IPR … A framework Business MissionProduct and Services Portfolio .... Strategic IntentMarket and Competitor PositioningProtection neededvis-a-visexisting Intellectual AssetsInnovation strategy and IPR plan
16Options available to the IPR Holder Exploit the IPR himselfLicense the IPR to another party (s) with mutually negotiated benefit sharing arrangementsCross License for mutually independent working and / or collaborative workingAssign the IPR to another party (s) for an appropriate returnBarter rightsEstablish a franchise system involving other partiesTake action against those who infringe his rightsLet the rights selectively lapse in certain countries
17Realising Value Valuation of Knowledge and IPR Licensing of IPR IPR InsuranceIPR as a collateral
18How does one realise the value of one’s intellectual assets A structured audit is necessary
19Calvin Klein Expands Bridge Business Hello Kitty – New Jewellery Collection by Kimora Lee Simmons and Judith LeiberHello Kitty's parent company, Sanrio, signed a licensing deal with powerhouses Judith Leiber and Kimora Lee Simmons to produce a luxury accessory collection of the girls' icon. »Calvin Klein Expands Bridge BusinessCalvin Klein Inc. announced last week it has signed a licensing deal with an affiliate of Italian manufacturer Fingen SpA to reintroduce CK Calvin Klein clothing line and accessories in Europe and the Middle East starting next spring.PHL Plans Worldwide Expansion of Porsche DesignGerman luxury automaker Porsche and its licensing and trading company Porsche Lizenz- und Handelsgesellschaft mbH & Co KG (PLH) intend to push the worldwide expansion of the Porsche Design brand and to introduce a new store concept along with new licenses, including men’s sportswear line, reports fibre2fashion.com. »Expectations High for Beyonce`s Ready-to-Wear Line »International film and recording star, Beyonce Knowles, today announces a joint venture with Arthur and Jason Rabin. This partnership will provide the infrastructure for licensing and brand management to the new Beyonce fashion label. In turn, BeyonceSource: fashiongates.com
20IPR Strategies Effective use of International Conventions Strategic options in the statutory provisions e.g. divisional applications, continuation, and continuation in partExtending life of an invention e.g. ClaritinJoint IPRIPR LeveragingIPR Litigation as a strategy
21IPR Portfolio Building Seed, nurture, cultivate and harvest Inventions to create the Present, Immediate Future and distant future portfoliosMeasuring IP Performance
22Beware !!!! Premature disclosure of information Seek usage clearance Public Testing of Inventions
23Institutional Imperatives Institutional IPR PolicyIntegrating IPR into business strategy & project managementEffective Use of IPR informationIdentifying areas of possible infringementsLicensing strategyPolicing of institutional IP assetsLitigation strategyIPR auditEffective utilisation of International Conventions.
24Professor Prabuddha Ganguli 262 Sher-e-Punjab, Andheri East Building Competitive EdgePatents and Designs Registration…… a few case studiesProfessor Prabuddha GanguliCEO“VISION-IPR”201 Sunview Heights262 Sher-e-Punjab, Andheri EastMumbai
25Anatomy of a PatentTitle, Inventors, Assignees, Date of filing, Date of Publication, Date of Grant, A, International Classification, National Classification Application number, Patent Number; AbstractBACKGROUND OF THE INVENTIONDescription of the Prior ArtSUMMARY OF THE INVENTIONBRIEF DESCRIPTION OF THE DRAWINGSDETAILED DESCRIPTIONPREFERRED EMBODIMENTSClaims
30 International Fashion Machines. ELECTRIC PLAID PRODUCT SPECIFICATIONS!Is it a computer display or a hand woven textile?IFM's Patent Pending Electric Plaid TM looks like a beautiful, soft textile artwork, but changes color like a computer display.IFM's Electric Plaid is a unique textile display technology and design material. It is used by IFM to create hand woven, sensuous individual artworks, interior design and architectural surfaces. Electric Plaid combines woven electronic circuits, color-change inks and drive electronics, to add TIME AND MOTION to textile patterns and design. Patterns change color slowly over time, to give you information or change the decor of the room. Electric Plaid is a reflective (it doesn't light up!) color-change medium. Electric Plaid can be combined with IFM's textile sensors, StitchSwitch, to create fully interactive textiles and INTERACTIVE ARTWORKS artworks StitchSwitch™ Embroidered and Woven Light Switches Woven and embroidered touch sensors for controlling lights or other electronic devices in the home.Electric Plaid™ Patent-PendingColor-Change Textile PanelsInternational Fashion Machines.
31Sewing Machines…A case study on Innovations…… Stitch in time with IPR A sewing machine is a mechanical (or electrical) device that joins fabric, using thread, in a manner similar to manual sewing. Sewing machines make a stitch, called a sewing-machine stitch, using between one to four stitches. They include means for gripping, supporting, and conveying the fabric past the sewing needle to form the stitch pattern. Most home sewing machines, as with many industrial machines, use a two thread stitch called the lockstitch. Some other common machine types are chain stitch machines and sergers.Mission: A machine to replicate hand-sewing.
32Sewing Machines Altered needles in the form of a fine steel hook to create a form of chain stitch1755 ; Charles Fredrick Wiesenthal,awarded British Patent No. 701 in for adouble pointed needle with an eye at one endwhich enabled it to pass through the clothby a pair of mechanical fingers andgrasped on the other side by a second pair.1790; Thomas Saint awarded British Patent No. 1764which had an overhead arm for the needle anda form of tensioning system.; various patents awarded for chain stitchmachines of varying types but non satisfactory functioning.
33Sewing Machines1830; A French tailor Thimonnier Barthelemy awarded a French patentIt used a horizontal arm mounted on a vertical reciprocating bar,the needle-bar projected from the end of the horizontal arm.The cloth was supported on a hollow, horizontal fixed arm,with a hole on the topside, which the needle projected through at thelowest part of its stroke. Inside the arm was a hook, which partly rotatedat each stroke in order to wrap the thread (fed from the bobin onto the hook)around the needle at each stroke. The needle then carried the thread backthrough the cloth with the upward motion of its stroke.This formed the chain stitch, which held the cloth together.The machine was powered by means of a foot pedal with the stitchformed on the top of the cloth, not the bottom as withmost other prior chain stitch machine made .Need felt for lock-stitch for strength. A lock stitch is created by two separatethreads interlocking through the two layers of fabric,resulting in a stitch, which looks the same from both sides of the fabric.
34Sewing Machines 1834; Walter Hunt’s developed a machine that used an eye-pointed needle (with the eye and the point onthe same end) carrying the upper thread, and a shuttlecarrying the lower thread. The curved needle movedthrough the fabric horizontally, leaving the loop as it withdrew.The shuttle passed through the loop, interlocking the thread.The feed let the machine down – requiring the machineto be stopped frequently to set up again. No patents filed.1846; Elias Howe patented a machine that used a similarmethod to Hunt's, except the fabric was held vertically.The major improvement involved a groove in the needlerunning away from the point, starting from the eye
35Sewing MachinesElias Howe did not succeed in finding investors in England and returned to the USA. He discovered that his invention was being infringed. He filed patent infringement suits against the infringers and eventually won his case in 1854 and was awarded the right to claim royalties from the manufacturers using ideas covered in his patent.1851; American Patent to Isaac Merritt Singer’s machineThat combined elements of Thimonnier’s, Hunts and Howe’smachines and used a flying shuttle instead of a rotary one;the needle was mounted vertically and included a presser footto hold the cloth in place. It had a fixed arm to hold the needleand included a basic tensioning system.Howe sued Singer and won the case. Singer was forced to pay alump sum for all machines already produced. Singer then tookout a license under Howe’s patent and paid him $15 per machine.
36Sewing Machines Allen Wilson had developed a reciprocating shuttle, which was an improvement over Singer’s and Howe’s.However, John Bradshaw had patented a similar deviceand was threatening to sue.Wilson then went into partnership with Nathaniel Wheeler toproduce a machine with a rotary hook instead of a shuttle.Wilson also invented the four-motion feed mechanismwhich had a forward, down, back, and up motion,which drew the cloth through in an even and smooth motion.1850s more and more companies were being formedand were trying to sue each other.
37Sewing Machines 1856 The Sewing Machine Combination was formed, consisting of Singer, Howe, Wheeler and Wilson,and Grover and Baker.These four companies pooled their patents,meaning that all the other manufacturershad to obtain a license and pay $15 per machine.This lasted until 1877 when the last patent expired.1900s; The first electric machines started to appear.At first these were standard machines with a motor strappedon the side followed by motor into a casing.This was followed by computer controlled and usestepper motors or sequential camsto achieve complex patterns..
38International Classification of Patents International Classification of Designs
40Bernhardt v. Collezione Europa Fed. Cir. 2004) (04-1024) Bernhardt sued low cost furniture dealer Collezione for infringementof six design patents. The district court, however,held that several of patents were invalid under 102(b) for prior public use. Specifically, the court found that Bernhardt's disclosure of the designsat a Pre-Market exhibition rendered the patents invalid. In addition, the court found that Collezione's products did not infringe the patents.
41Natural World’s Festival Elephant Fryett’s Fabrics Settles Hathi Design Infringement ClaimAgainst Natural WorldFryett’s HathiNatural World’sFestival ElephantTessitura A R Export SRL manufactured for Fryett’s, as exclusive distributor, a distinctive cushion panel design known as Hathi, marketed by Fryett’s within its Porter & Stone collection from June By mid 2002 Fryett’s had sold over 45,000 metres of Hathi.Natural World then began to sell a similar design marketed as Festival Elephant at prices which undercut the Hathi product.Fryett’s flied suit against Natural World alleging infringement of copyright and seeking an Injunction and damages.Decision in Favour of FryettPayment of £55,000, together with undertakings from Natural World to withdraw its Festival Elephant cushion and to deliver up all residual stocks of that design to Fryett’s.
42Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC The US District Court in New York dismissed Tommy Hilfiger Licensing Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for dogs, does not infringe on the fashion designer and cologne maker's trademark.Nature Labs sells its perfumes in pet and novelty stores,packaged in batches of three similar bottles,bearing slogans like "strong enough for a man,but made for a chihuahua."The Court ruled that the perfume, called Timmy Holedigger,could not under any circumstance be confused with Tommy Hilfiger cologne,nor could it be seen as a competing product trading on the designer's good will.Besides, Nature Labs LLC, sells numerous other parody fragrances for pets,including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports)and Miss Claybone (Liz Claiborne).The Court observed that the other trademark holdershave accepted the parody and not challenged Nature Lab's Trademarks.
43Shirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) Court Decision:Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However, Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original.
44Shirin Guild vs. Eskandar Ltd and Another contd…….. Eskander Nabavi had been designing chenille and tweed sweaters of a wide, square design since early 1991September 1991: Shirin Guild met Nabavi to negotiate production of loose fitting, square peasant style garments and agreed to let Nabavi produce square style garments from her design drawings bearing particular resemblance to a wide sweater designed by the designer GigliHavelock a company produced samples for Nabavi based on the drawings of Shirin Guild and the Gigli sweater sample having a width of 100cm and a V-neck in contrast to the 88cm width and crossover V-neck of Guild's design. In due course a shirt and cardigan of the same square 100cm wide design of the Havelock sample sweater were also made.
45Shirin Guild vs. Eskandar Ltd and Another contd…….. A partnership was formed between Shirin Guild and Eskander Nabavi along with two other persons with each partner having a 25 per cent share of profit. There was no agreement that any copyright or design right originally owned by Shirin Guild was to become partnership property. Therefore Shirin Guild remained the sole owner of those rights.Partnership was terminated in August 1992.Almost a decade after the partnership was dissolved, Shirin Guild filed a suit claiming that -** Eskander Nabavi had copied her designs to set up his own range of square and wide styles of shirt, sweater and cardigan, in competition to her.** Her garment designs were protected by copyright as works of artistic craftsmanship, or alternately their shape and configuration was protected by design right.
46Shirin Guild vs. Eskandar Ltd and Another contd…….. The key task before the court was :Whether or not an article was a work of art was whether the maker had the conscious purpose of creating a work of art.
47Shirin Guild vs. Eskandar Ltd and Another contd…….. Observations by the court :The samples of the Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However they are examples of new developments in the fashion world.
48Shirin Guild vs. Eskandar Ltd and Another contd…….. If a sufficient level of independent skill and labour was used to modify an existing design, an original design would result for copyright and design purposes.Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Though other designs featuring the wide look existed in the relevant design field of ladies luxury fashion, the essential features of Shirin Guild's designs were not commonplace and therefore, she succeeded in her claim of design right infringement.
49CONTESSA FOOD PRODUCTS, INC. v CONAGRA, United States Court of Appeals for the Federal CircuitCONTESSA FOOD PRODUCTS, INC.(formerly known as ZB Industries Inc.),Plaintiff-Appellee,v.CONAGRA, INC.(doing business as Singleton Shrimp Company and as Meridian Products),MERIDIAN SEAFOOD PRODUCTS, INC.,and OCEAN DUKE CORPORATIONUnited States Court of Appeals for the Federal Circuit DECIDED: March 13, 2002
51On remand, the district court is instructed to consider features, in addition to the arrangement of the shrimp on the top of the tray, regarding the underside of each of the accused products visible after the packaging is removed. The overall features of the top, side and underside of the accused products must be compared with the patented design as a whole as depicted in all of the drawing figures to determine infringement.Because the district court did not fully consider the underside of the tray illustrated in Figure 4 of the `612 patent when applying the "ordinary observer" test, we vacate the decision granting summary judgment of infringement and remand for further proceedings consistent herewith.
55CONCEPTS Managing Intellectual Property INNOVATION PROCESS OUTPUT MARKETWorking through thePatents & other IPR Filings/RegistrationsJoint DevelopmentsLicensing OptionsStrategy for Foreign FilingsIP gridManaging IPR PortfolioProduct LifecycleMonitoring IPREnforcing IPRPolicing IPRBusiness OpportunitiesTechnology Options ( mapping exercise )Strategic OptionsFit in IPR PortfolioMarketing tieupsRecord Maintenance & Updating IPR Information
56What do we do ? Formulate Institutional IPR Policy Institute Information classification policyHow do you sign MOUsMake all employees aware of the IPR and information classification policiesUsers at unit level made aware of issues & responsibilities. Manual of best practices.Set up patent information serviceStructured annual training and awareness workshopsProtection … establish a continuous process
57The IP Policy ProcessRecognise the Vision and Mission of the InstituteWhat are the various activities your institution is involved inInteraction of the Institution with the outside worldInteractions within the institutionWhat is the human resource policy the institute say vis-à-vis benefit sharing arrangements, etc.
58The IP Policy Who will sign on behalf of the organisation Which will be the team to advise on IPR issues…. MOUs, protection, etc.What will be the channel to get it going on the floor.Who owns what?..Documentation?Disclosures?Who will pay for the protection?
59The IP Policy When can the Institute Name or Logo be used? Faculty participating in courses outside… Can Institution name be used?What will be the mechanism to identify Institutional IPR infringements or activities in the market that are damaging to the Institute’s reputation? Who will initiate actions?
60Motivation for IP Protection and Management IPR Management helps to integrate the institution’s innovation process with a wide range of R&D partnershipsInstitutional IPR encourages partnership with other developers especially with SMEs in the innovation supply chain.Optimal use of extra-institutional knowledge. Avoid duplication and manage funs for R&D effectively
62What the Institutional IP Policy Should Lead to….. Timely Protection and Management of Institutional Knowledge Assets…Encouragement of partnership with other developers especially with SMEs in the Innovation Supply Chain..Earnings from innovations to pay for further research and acquiring other technologies ( e.g. licensing and cross-licensing)Recognition to inventors and enhancement of ethical standards in the InstitutionTransparent Benefit Sharing from IP earnings .
63What the Institutional IP Policy Should Lead to….. Creating and retaining leadership in the Knowledge Market.Academic Freedom to operate in a global environment.Guarding the Institution from taking on undue Financial and Legal liabilities.Effective enforcement of Institutions IPRsEnhancement of Institutional ImageAssuring Long Term Growth of the Institution .
64Developing a Business Oriented Curriculum and course Material for IPR for NIFT Professor Prabuddha GanguliCEO“VISION-IPR”103 B SENATE, Lokhandwala Township,Akurli Road, Kandivli East, MumbaiTel:
65Key points to consider NIFT’s Mission Sensitising Students to face a fierce global competitive environmentCreating Frameworks for NIFT Students and Faculty to derive optimal value for their creationsEffectively networking with commercial organisationsUpgrading professional skills in Indian IndustryCreating new career options in a niche area of global significance.
66Creating IPR informed professionals in fashion industry ... not necessarily experts
67IPR ModulesIPR… an imperative business tools especially in the context of international trade practices, norms, treaties, agreements, etc.Introduction to Basic IPR Tools…. Driven by case studies derived from the global fashion industrySearching for IPR InformationSignificance of Documentation, Formal Contracts, Structuring of Negotiations, Pitfalls to avoid and essentials to take care of.Institutionalising the IPR Process.