Protecting Your IPR (Intellectual Property)

At the recently concluded eTailing India Expo 2017 – “India’s Flagship Conference & Exhibition on Retail, eCommerce and Mobile”, leading thought leaders shared their perspective on “Technology Services for Retail &eCommerce”. This article summarizes the session on Protecting Your IPR (Intellectual Property). (The session is not verbatim here)

Whether it is startups, entrepreneurs or whether it is long standing corporates, everybody has some needs about IP in India.

IP is truly one of the cornerstones when you start your business. Everybody thinks that we have pan IP laws in India.IP rights in India are very solid. You have to find the right people to enforce them. The patent law in India is one of the strongest patent laws in the world.

Myth: Nobody believes that you can actually enforce IP right in India

Reasons:

• Infringers will get away in any case
• IP getting stolen or copied is a way of life
• Courts are going to take forever to decide a case
• Even if courts reach a decision, there is no interim relief
• People think that litigation through IP only happens in Delhi

The above mentioned reasons are all myth.

Here are some case studies to prove it

1. Here is a client Hygienic Research Institute. The defendant infringed the client’s product from “Super Vasmol 33” to “Super Waxmol 303”. We successfully restrained the defendant and it took us just 37 days to seize their goods. It proves that enforcement in India is really not bad as one thinks.
2. Lavasa Corporation filed a case against a Kerala based audio visual company who used their name as “Lavasa Visuals Pvt Ltd. “. RKD (A Patent and Trademark Attorney in India) were successful in obtaining an order of permanent injunction for Lavas Corporation restraining the Defendant from using the mark “Lavasa” as part of its corporate name. Also Lavasa Corporationwas declared by the court as a well-known mark. There are certain classes (45 classes) under which the trademarks are registered and Lavasa was a reputed name under it. So, there are lots of intricacies in the trademark law.

So, these all shows enforcement is fine. It’s about strategy, willingness and commitment to do it.

Myth: Publication is more important than patenting

The fact is, to get a patent; you need Novelty- something has to be new anywhere in the world. It has to be invented.

Myth: IP is just a status symbol, monetization is just a concept

This comes under the stage when you decide thatyou’re going to get trademarks or your copyright patents. We go a further step ahead by going in to monetize that patent. How do we do it?

We look at your portfoliofor things missing in it. We look at the valuation. There are specific metrics by which you can give a monetary value to patent, trademark, design, copyright, etc. Then you can sell the portfolio, you can license it, you can get royalties or get into any agreement.

I cannot get patents for software

Section 3 of the Indian Patents Act shows everything that cannot be patented and software is mentioned under it. However, while software is non-patentable, a computer implemented program that can show a technical effect is patentable. That is something a good patent attorney can make you know.

Myth: Patent Searching? Why do I need that? I am not filling any patents right now.

Here is a breakdown for different types of searches

Prior Art- A prior art is anything from your field related to your invention. It looks at whether it is new, was there anything like this before? Before you file for patent, it is always good to do this search.

Patentablity- It looks at prior art plus it looks at invented stuff and a patent attorney can tell you whether it is obvious or not obvious.

Freedom to Operate- It is used to seek a patent for negative right. It allows you to stop others using, selling, and importing your invention. But, it doesn’t give you right to make it your invention.

Invalidation- You found a patent andthought, what is so inventive about it.So you go to the patent office and state the reasons where you feel the patent should not have been given.

Technology Maps and White Space Analysis- Technology maps look at your technology right from the start of your invention in a chronological order. This helps your R&D team to make a map.

We look at the white spaces in the map and decide upon where no R&D has happened. Which areas have no patterns? Getting information from patterns is a good source of information that is sometimes overlooked.

Q&A

At what stage shall somebody apply for a patent?

In India, you have the option to do a probational patent application or a complete one. A probational patent application is nothing but your idea. You file it to get your priority date which means if somebody later files for the same idea, they don’t get it. Probational is never published but you can prescribe the idea briefly. The Indian patent laws give you a year to develop the idea. In 12 months of time, when you have developed the idea further, you can apply for the complete patent.

You get patent for things which are thoroughly revolutionary. The specification that you file is examined by the experts in that specific field.

Are there tips to follow, so the chances of getting a trademark get higher?

So you start-off with the trademark search. We will look at others map in that class whether by word, logo or the way it looks. We will do a trademark search and give you the rate of success. We will represent you at the trademark office when the examination report comes up. So, you need to just do your due diligence before.

Someone had patented a design in USA back in 2000 and it has been never used in India. What is the other option to use it in India?

If they have not filed a patent for it in India, you can start using it.

Speaker: Disha Dewan (R K Dewan & Co)