Intellectual property rights & Patent cases

Intellectual property rights & Patent cases
Dr. Om Prakash Singh Assist. Prof. IIT Mandi

Intellect Intellect is an umbrella term used to describe a property of the mind that encompasses many related activities such as the capacities to reason, to plan, to solve problems, to think abstractly, to comprehend ideas, to use language, and to learn. There are several ways to define intelligence Include traits such as creativity, personality, character, knowledge or wisdom

Intellect is the Imagination with Reasoning
Key Elements in Intellect Knowledge Information Knowledge creation / Generation Knowledge + Imagination = intellect & Intellect is the Imagination with Reasoning

Intellectual Property
An intellectual person (involving imagination and reason) is the one who tries to use his or her Intelligence and analytical thinking in either his profession or personal pursuits. Products of the mind creativity is the Intellectual Property and Rights to protect this property is the Intellectual Property Rights

Intellectual Property Rights (IPR)
The IPR relates to the right of an individual to derive benefits from this intellectual property and to exclude others from doing so. IPR are a bundle of exclusive rights over creations of the mind, both artistic and commercial Under IPR law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; ideas, discoveries and inventions; and words, phrases, symbols and designs

Key elements of IPR Patents Copyrights Designs
Trademarks / Service marks Confidential Information / Trade Secrets Geographical Indications Layout designs for integrated circuits Protection of new plant varieties Domain name Brand name....

The Pomegranate story Himanshu, a graduate from a leading engineering college Went to do his PG Diploma in Management Employed in prestigious consultancy firm, NY,USA Worked there for 5 years Satisfied and happy with his work Because of his good education coupled with amiable personality, and Positive attitude, he was able to take all challenges in stride Story taken from the book: Business and Intellectual Properties, Protect your ideas by A. K. Agarwal

The Pomegranate story…
The Will One evening, when he returned from the office, received a letter from a lawyer in India. To his utter surprise, the mentioned that one his uncle who used to live in Anarabad in India, had passed away. In his will, Uncle bequeathed all his property- including 1000 acres of pomegranates orchards. Himanshu had fond memories of spending some time in his childhood on the orchards and adjoining farms.

The Will He called his mother who was leading a holy, spiritual and healthy lifestyle at an Ashram in Haridwar, in the foothills of Himalayas. His mother advised that it was for him to make up his mind whether to continue living in New York or get a taste of simple life at Anarabad. Since his childhoold, he was fascinated for simple life on a farm – in the midst of nature, greenery, trees, animals, etc. He made his mind to return to India Haridwar In the midst of nature

Anarabad Anarabad, a small town on NH Town was recently registered with Geographical Indication in India The Pomgranates from Anarabad are so famous that any person passing through the town-whether by bus or car – stop to buy fresh pomegranates; available at throwaway price. Local life revolve around the fruit

Anarabad Anar is a hindi word for Pomgranates Many male and female names start from Anar: Anarlal, Anarchand, Anarbhai …. Anarmati, Anaradevi… Anarkali … Almost all recipe include Anar in Anarabad… all visiting guests are offered Anar juice first… Different uses of Anar seeds, skin, juice etc, are known to local people and have a part of traditional knowledge in Anarabad (recall Neem, Haldi…)

The problem of plenty Farm manager gave him baskets full of Pomegranates Himanshu asked him to make juice and sell it in the market Only few thousands rupee juice could be sold in the entire day Too little for juices as it is very costly in USA He asked few local people to peel the fruits for juices, but they could peel only few... "Much cry, too little"

The Pomegranate Peeling Machine
Himanshu called his friend Rohan Rohan had done engineering He was already awarded many patents for his inventions He promised Himanshu to work on the peeling machine He came with a new design of the machine that could peel 2 Pomegranate/minute Impressive: > 100 Pomgranates/hour They both worked on the design, made the machine They kept the design of the machine a close guarded secrate They could sell juice in the local market Setup a kiosk near NH. Business flourished day-by-day

The Patent of the Machine
Bhimsingh, a local landlord, owned double the land area than Himanshu had Powerful; Godfather for the local people He had heard about Himanshu's flourishing business Planned to setup similar business Talked to Himashu and offered to buy one Himanshu refused Bhimsingh threatened Himanshu of dire consequences, to which Himanshu did not pay any attention Himanshu was disturbed, informed Rohan about the incident Rohan suggested to file the patent of the machine immediately Later, patent was granted as the design was new, noble and useful. Bhimsingh

P8 and the Slogan Banner at kiosk,"Fresh pomegranate juice is available“ Made up of his mind to brand the pomegranate juice Brainstormed and came up with simple name, "P8", inspired by SMS language "P" for Pomegranate and "8" for last syllable of the work Pomegranate Later, he applied for trademark registration for P8 Meanwhile, he wrote 'TM" after P8 to convey it was his trademark and no one should use it After he got registration for the trademark, he started using R in the circle P8TM

P8 and the Slogan Himansu came up with a slogan, "P8 is Gr8, Drink P8". In Hindi he wrote,"P8 piyo, mast jiyo". He immediately wrote (c) after the slogan to denote that he had copyrighted the slogan Contacted and paid local singers to set this jingle to music which was later broadcasted on FM radio stations. Also started a website: and registered the domain name Now his business was well known not only in Anarabad but also in India and world He also advertised the trademark P8 and slogans in the national and local dailies

Shelf life of juice Problem: shelf life of the juice was short
Not possible to extract much juice and store it Rohan, his friend, promised him some chemicals that would enhance the juice shelf life Rohan setup a make-shift laboratory, they worked on the preservative Found a preservative ABC that extended life to 6 months Himanshu installed more machines Business was booming

Competitor Replicates
Bhimsingh, the landlord, bought a peeling machine from the local grey market which was a copy of Himanshu's patented machine. Bhimshing started copying Himanshu's business model Start poaching Himanshu's emplyee, get supply of contracts from gov. offices... Nagative impact on Himanshu's business model. His manager informed that there is almost no sell of juices. He started making losses

Original logo “Godrej” Almirah I purchased

The secret Herbs Himanshu turned to his mother for help and support
She promised him to help. Next day she gave a secret herb in fine powdered form to add to the pomegranate juice. Taste enhanced amazingly His mother cautioned Himansu to keep it a secret. Himansu promised Thus the mixing of the herb become a trade secret for his business P8 launched a new product called, "P8-Magic. Customers liked new flavour Businesses flourished

The Cup Encouraged by the success, Himanshu asked one of this friend to design a cup in the shape of pomegranate Design was treat for eyes Himanshu filed for a design registration for the cup His customers particularly children, were fond of buying this cup They enjoyed the juice and kept the cup with them as souvenir. Design become very famous Samsung-Apple battle in court on design

Moral of the Pomegranate story
Patents, copyright, design registration etc. are business needs Innovation is the key to survive in any field Your Intellectual properties will be copied, be alert! Your business is not independent, may overlap!

ESSENTIAL CONDITIONS FOR PATENT GRANT
Novelty Non-Obviousness Utility Enablement

Novelty Non-obviousness Utility Enablement
Means the invention must be new and not known to the world Non-obviousness Mean that there must be an inventive step which is not obvious to the person skilled in the art Utility Means that the invention must be of some use Enablement Means providing sufficient and details information about the invention so that any appropriately trained person is able to make it The inventor must make invention. No grant of patent for merely the concept or idea. It has to be operational.

Prior art, Public domain, Public use
Most important criteria for the patent award: Novelty It has to be understood in conjunction with prior art: something which is already known to mankind If the inventor invented really new and did not bother to apply for patent within a reasonable period of time, there is good chance that it may be termed as ‘prior art’ or ‘public use’.

A comparison 20 years

How to file a patent Filing of a patent application E-filing
Hard-copy filing For detailed procedure, visit Filing of a patent application Provisional Complete Specification

Similarity between Research paper and Patent
Introduction on related research Methodology Results Discussion Conclusion Patent application Introduction to prior art Methodology Results Discussion Claims

Why Patent are important?
Patents are significant corporate assets. Intellectual property can be one of the most costly single components for many products. For example, MPEG-2 is a technical standard for video technology in various consumer products. The MPEG-2 licensing fee per DVD player is approximately $2.50 USD, a fee that the world’s DVD player manufacturers have agreed to pay for their products in order to be compatible with the MPEG-2 standard. In addition, groups of patent holders separately license their patents related to DVD technology. Their fees collectively amount to about $8.50 USD. Thus, the IP license fees related to DVD players amount to about $11 USD. Thus, for a DVD player that retails for $44 USD, about one quarter of its price is related to intellectual property.

Revenue Source Marketing Benefit Bargaining Chip Industry Control/Influence Defensive Uses

Consider also that a company may start with a first-to-market advantage but in a short while competitors will have learned how to make and market the product successfully. At least one competitor will eventually learn how to make the product cheaper than the original manufacturer. Unless the first-to-market company holds significant intellectual property rights (IPRs), it may eventually see its revenue shrink as larger and larger players enter the market. By exploiting its IPRs, the company can completely foreclose the ability of others to manufacture the product, or the company can enjoy licensing revenues that represent a healthy fraction of what its own profits would be for selling the product.

Patent case: 1 - Madras High Court
S Paul Raj versus TCS (Tata Consultancy Services) S Paul Raj, a BSC student (computer science) Concept named ‘FLYGUARD’, which involved retaining all data – physiological and physical – of a traveller on a magnetic tape. It included the place of origin, fingerprints, retinal/corneal pictures and other details stored in a processor Such details would be made available to all government agencies. He did not operationalize the idea. Instead, he wished to sell it to TCS for RS 5 crore so that it could develop further and put to commercial use. In 2007, he filed an application at the Patent Office for FLYGUARD.

Patent case: 1 - Madras High Court
S Paul Raj versus TCS (Tata Consultancy Services)… Later he found his innovation on the TCS webpage as ‘ePassport (Smartcard) and also as ‘TCS ePassport Solution’. He filed petition in Madras High Court seeking injunction. TCS replied, The process of flying across countries using a digitally encrypted biometric card embodying physical and physiological parameters and doing away with the requirement of passport or visa was devoid of any novelty. It was neither original nor new. Such a concept involved technologies that had already been in the public domain for a long time. Moreover, the idea itselft was not patentable, as the practical application or discovery that leads to patentablity was absent Madras high course dismissed the case in 2009 on the grounds that it was an attempt to coerce TCS to extract certain privileges.

Patent protection and expensive legal battles
Patents do not come cheap Filling for a patent and protecting a patent are expensive proposition It is a business decision which requires careful analysis of the legal environment in the country Thomas Alva Edison found it conducive to fight a long legal battle to protect his electric bulb as the legal environment in the United states for the protection of patents was highly evolved in the late nineteenth century.

Patent claims Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application. The claims are of the utmost importance both during prosecution and litigation. A broad claim is likely to be challenged in the court. Edison versus Sawyer and Man patent case is an example of broad claim.

Patent case: 2 – US Supreme Court
Edison versus Sawyer and Man Edison Thodas Edison once commented, “My electric light inventions have brought me no profits, only 40 years of litigation”. Edison spent more than US$2 million in the late 1800s in patent litigation for the bulb. Thomas Edison's first successful light bulb model, used in public demonstration at Menlo Park, December 1879

Edison versus Sawyer and Man Sawyer and Man’s lamp consisted of an incandescing conductor of carbon made from a vegetable, fibrous material, in contradiction to a similar conductor made from mineral or gas carbon. Experiments with carbonized paper and wood carbon were unsuccessful and lamp was never a commercial success. A patent was granted for this lamp.

Edison versus Sawyer and Man Edison’s lamp consisted of a burner made of carbonized bamboo of particular quality. It was bent into the form of a loop and ends were secured to two fine platinum wires. Edison worked very hard to identify the right carbonized bamboo. Edison tried as many as different woods of exogenous growth and ultimately found a bamboo ground in Japan to have the particular characteristics suitable for a filament, as fibers ran nearly parallel than in other species of wood;

Edison versus Sawyer and Man Sawyer and Man filed a case against Edition for infringing the patent – using conductor made from vegetable, fibrous material The US Supreme Court decided in 1895 that: Sawyer and Man did not have a monopoly over all fibrous and textile materials for incandescent conductors. An Examination over 6000 vegetable growths showed that none of them possessed the qualities that fitted them for that purpose. Court held that Sawyer and Man had made a very broad claim covering all fibrous and textile materials, which was not justified.

Using patents as a lethal weapon in business strategy
As the patent regime in India is becoming stronger, Indian companies are using patents as an essential tool and, as a weapon in their business strategy Example: court cases between Apple, Samsung, Google, Microsoft etc. The recent case of Bajaj versus TVS The matter is still in court, but interim orders created the desired effect for both companies.

Patent case: 3 – US federal court
Apple versus Samsung Apple claimed its iconic iPhone and iPad had been illegally copied Samsung. Apple won (24th August 2012) more than 1 billion US dollar in a massive victory over South Korean giant Samsung, in one of the biggest patent cases in decades. Samsung either pull their devices or redesign them or pay royalties. Even a delay in sales could endanger Samsung's position in the US market, where it is currently the top seller of smartphones.

Patent case: 4 – Madras High Court
Bajaj versus TVS: Bajaj Auto Limited filed a patent application in 2002 for ‘An improved Internal Combustion Engine working on four stroke principle’. Granted in 2005 The invention: Two spark plug for efficient burning of lean air fuel mixture in a small bore engine between 45 and 70 mm Better combustion in shorter time Emission reduction and improved fuel consumption Maintain predetermined level of performance

Bajaj versus TVS: Use of two spark plugs in large bore engines or in high performance/racing bikes was already known. In cases of racing applications, twin spark plugs already used in small bore air cooled engines which are not lean burn. Racing engines use twin spark plug as a means of mitigating knock. The invention, “DTS-i Technology” of providing a second spark plug in small bore engine running lean, was never thought of or implemented in the automobile industry. Bajaj started using DTS-i Technology’ in motorcycles in 2003.

Bajaj versus TVS TVS Motor Company filed a revocation petition in 2007. TVS launched a twin spark plug motor bike ‘FLAME’ of 125 CC in December 2007 Engine bore size: 54.5 mm Bajaj sued TVS for patent infringement and sought a permanent injunction. TVS argument: Bajaj invention was already know as US Honda patent no dated August 1985. It suffered from the ‘vice of obviousness’ Bajaj argument Invention was not obvious. Honda patent was neither in respect of small engine or aimed at efficient combustion of lean mixture TVS Flame bike

Bajaj versus TVS TVS suffered a blow when Madras high court (Single Judge Bench) granted a temporary injunction in Feb 2008. Huge loss of revenue Madras High Court, however, did not decide the dispute regarding the validity of the patent. Later, Division Bench of the Madras High Court granted relief in favour of TVS in May 2009. In Bajaj’s appeal, Supreme Court directed Madras High course to decide the matter expeditiously. Allowed TVS, in the mean time, to sell its motor bike FLAME while maintaining accurate accounts of sales

Drafting a patent application

LEGAL MATTER A patent is a legal document granting its holder the exclusive right to control the use of an invention, as set forth in the patent’s claims, within a limited area and time by stopping others from, among other things, making, using or selling the invention without authorization. For example, patents could be granted for a battery that efficiently stores solar energy indefinitely and without loss, a vaccine to protect against malaria or a new compound for transforming fish bones into agricultural fertilizer. In legal matter, wordings are very important Even if you are right and opposite party is blatantly wrong, if you cannot write it properly, you will not get the justice.

where writing decides you win or loose
A legal case study: where writing decides you win or loose Of course, there are other factors too ! In District consumer court In the Supreme court to argue the case

TYPICAL PARTS OF THE PATENT APPLICATION
Once a patent agent understands the invention he can begin preparing the patent application. The parts of the application are generally: Abstract Background Drawings Detailed description (or specification) Summary Claims

How a patent looks

The Claim section

The Claim section…

STARTING TO DRAFT CLAIMS
First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version. When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. It is necessary to describe the invention so that it is complete, so that it works, but also so that it is different than what is known in the prior art. What makes your invention different? This must be made clear in the claims.

When drafting a claim you want to start with something like this: A {insert title} comprising: {list the parts one by one} {then explain how each are connected}. Like A machine, comprising: a subcomponent X formed by combining Widget A and Widget B; a subcomponent Y operably coupled to the subcomponent X; and a subcomponent Z operably coupled to both the subcomponent X and the subcomponent Y. Example 1: Claim 1 A sandwich comprising: two pieces of bread, peanut butter and jelly, wherein the peanut butter is spread on one piece of bread and the jelly is spread on the other piece of bread and then the two pieces of bread are put together so that the peanut butter and jelly are touching.

If you want to describe the invention with every possible option you can think of, then how to write it? Let’s say that my preferred peanut butter and jelly sandwich has bacon, lettuce, tomato and fluff. I would have a second claim that is something like: Claim 2 2. The sandwich of claim 1 further comprising: bacon, lettuce, tomato and fluff, wherein these ingredients are disposed between the peanut butter and jelly.  Notice how simply we added the extra parts and then say where they go/connected.

Example 2 New design: Invention; How to draft claim of your invention? Ordinary shovel design: Prior art

Claim to an ordinary shovel: Claim to an novel shovel: 1. A shovel comprising: an elongated handle; and a shovel head; wherein said shovel head is attached to said elongated handle. A shovel comprising: an elongated handle having a first end and a second end; and a shovel head; wherein said shovel head is attached to said first end of said elongated handle. The invention of claim 1 further comprising a second elongated handle attached around said first end of said elongated handle. The invention of claim 2 wherein the said second handle makes an angle in the range of 3050 with the said elongated handle of claim 1. The invention of claim 3 wherein the second hand is attached with the said elongated handle of claim 1 by means of high strength material plates by insertion of a screw through said neck of the shovel head and into said elongated handle… Note: The elements are introduced with either “a” or “an”, as is grammatically appropriate. Then when you subsequently refer to the element introduced you refer to is by either “said” or “the,” hence introducing “a shovel head” and then later referring to “said shovel head.” Notice also that the shovel head could be attached to the elongated handle in a wide variety of ways

Thank you

Ford-Seldon patent litigation

REVERSE ENGINEERING PRODUCTS ACTIVITIES PRESENTATION WINNER
Group 1: Induction Heater Group 2: Microwave Oven Group 3: Mobile (smartphone and normal phone) Group 4: Steam Iron ACTIVITIES Understand how the product does and works Disassemble the product Understand the function of components Assemble the product (must be in same working condition) PRESENTATION Come up with idea to reduce at least Rs. 1 cost in the product Come with an idea of new product/innovation that works on the same/similar principle WINNER One innovative group will be selected as winner and winner trophy will be presented

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