Intellectual Property : The new frontier Ashish Basu 5 th August 2004
Agenda u u u u u What is ‘Intellectual Property’ Historic context Tangible vs. Intangible Assets Patents, Copyrights, Trademarks Why is it relevant? The Indian context Why BE College? What can be done, short term, long term? Conclusion Ashish Basu © July 2004
What is Intellectual Property u u “Intellectual Property or IP is the term that describes the ideas, inventions, technologies, artwork, music, literature that are intangible when created but become valuable in tangible form as products”. - World Intellectual Property Organization Forms of IP – Patents, Trademarks, Copyrights, Other evolving forms Some IP s that changed the course of humanity Inventor Country Invention, Year J Gutenberg Germany Printing Press, 1440 Conrad Gesner Switzerland Pencil, 1560 Maharaja Jai Sigh India Astronomical Instruments, 1728 O & W Wright USA Airplane, 1903 Vladimir Zwoykin Russia Electronic Television, 1929 Konrad Zuse Germany Programmable Computer, 1941 Alexandar G. Bell USA Telephone, 1876 USA Morse Code, Telegraph, 1840 Ashish Basu © July 2004 Samuel Morse
Historical Context The concept of Intellectual Property or IP is not new u The Venetian Law of 1474 is considered the first systematic IP law u Patent / IP Laws - England: 1624; France: 1791; USA: 1788; Germany: 1877 Japan: 1888; India: 1888 u u 1 st Major International Effort: The Paris Convention, 1883 – for the protect of IP in other countries; covered patents, trademarks & industrial designs u 2 nd Major International Effort: The Berne Convention, 1886 – for the prote of Copyright of literary & artistic works in other countries; covered copyri u 3 rd Major International Effort: Formation of the World Intellectual Property Organization or WIPO, 1967 – covers patents, copyrights, trademarks…ot u 4 th Major International Effort: Trade Related Aspects of Intellectual Proper Rights or TRIPS of WTO, 1996 – covers new types of IP e. g. IC’s, S/W, H/W Ashish Basu © July 2004
Tangible/ Intangible Assets - Countries Source: WIPO Data from Japan: About 50% of Total Asset Data from EU: About 40% of Total Asset Data from UK: About 40% of Total Asset US Companies’ Intangible Asset As a percentage of Total Asset The brick & mortar economy is changing to a economy of ideas/ IP Ashish Basu © July 2004
Intangible Assets - Companies Source: Patent & License Exchange, WIPO Intangible Assets like IP are on their way to become the ‘ultimate asset’! Ashish Basu © July 2004
Universities – some examples • Bayh-Dole Act 1980 • Asso. Of Univ. Technology Mg AUTM – 2178 members by 199 • Japan’s Tech Licensing Law f Univ. in 1998; About 15 TLOs n • Oxford Univ. TLO 1988, called ISIS Innovation Source: WIPO Ashish Basu © July 2004
Why is it relevant ? Intellectual Property is an important National, Institutional & Corporate Asset. In 2000 a Price Waterhouse estimate indicated roughly 78% of S&P 500 Value was in Intellectual Assets, going forward the importance of Intellectual Assets will increase vis-à-vis Physical Assets. u Good academic institutions have an obligation to train their students adequately because many of today’s students will join a very ‘IP Aware’ workforce tomorrow. Many of them will directly work for IP companies. u Intellectual Property enhances National & Institutional Ashish Basu © July 2004 valuation and u
Overview of IP Laws u Patents ( Federal Law in the US) Ø Ø u Protects structure and function Foreign country (country by country) Copyrights ( Federal Law in the US) Ø Ø Tangible medium Ø u Protects expression only Must register within 3 months of first publication Trademarks ( Federal & State Law in the US) Ø Ø u Protects established relationship between seller and buyer Includes provisions prohibiting unfair competition Trade Secrets ( State Law in the US) Ø Economic value for not being generally known Ø Subject to reasonable steps to maintain secrecy Ashish Basu © July 2004
Patents: Underlying Ideas Patentability : Processes, machines, articles of manufacture, compositions of matter Must be useful, novel & non-obvious Rights : Making, Using, Offering for sale, Selling, Importing without the owner’s consent Inventorship : Must be filed in the names of the true inventors, idea to be reduced to practice. “The system added the fuel of interest to the fire of genius “– Abraham L President of the United States of America 1861 – 1865 & a patent holder. Ashish Basu © July 2004
Patent: what does it contain? Specification: “…. description for repeatability by someone equally trained in the prior art……”. ” Claim what exactly is protected : Inventor/s : person/s who are responsible for the invention and reduction to practice. Even in the cases of company patents, the inventors are named. Date date of award of patent, protection applies from the date of application for 20 years : Patent No. : Ashish Basu © July 2004 awarded by the PTO
Steps/ Timeline to get a Patent Source: IP Strategy Group 1. Invention Disclosure Statement: Pre examination of prior art 2. Draft Application: Specification & claims repeatability, novelty 3. Application: Computer Application to PTO 4. Review: PTO Examination 5. Result: Clarifications/Rejection Ashish Basu © July 2004
Copyright: “…. original works of authorizing fixed in any tangible medium of expression…. from which they can be perceived, reproduced or otherwise communicated, directly or with the aid of a device. ” Five rights: Reproduction, Adaptation, Distribution, Performance & Display subject to fair use exceptions. Ashish Basu © July 2004
Securing a Copyright : Created automatically the moment the copyrighted material is. Validity: i) Individuals: 50 Years after the author’s death ii) Joint 50 Years after the death of the last : surviving author iii) Unknown : 75 years from the first publication Symbols ‘Copyright’ © or ‘Copr. ’ Ashish Basu © July 2004 :
The Indian context u Country of renowned inventors – Aryabhatta, Barajamihir, Maharaja Jai Singh, J. C. Bose. S. N. Bose, P. C Roy, C. V Raman, S. Chandrasekhar to name a few. u Fairly up to date and robust legal framework: First Patent Law, 1888 (Same year as Japan ! None of our neighbors in Asia are anywhere near India w. r. to the legal framework & practice ); some examples 1. Patents, Act, 19/09/1970, No. 39 2. Copyright, Act (Consolidation), 04/06/1957 (30/12/1999), No. 14 (No. 49) 3. Copyright (Amendment) Act, 1999 4. Copyright (International Conventions Organizations ), Order, 17/05/1989 5. Marks (Register India), Order, 13/12/1991, No. 848 (DK_049) 6. Designs (Act 1927 S. 152 India), Order, 20/12/1976, No. 315 7. The Ashish Basu © July 2004 Geographical Indications of Goods (Registration and
An Indian example REQUIREMENTS OF INDIAN PATENT LAW AND PRACTICE RELATING TO MECHANICAL, ELECTRICAL, AND ELECTRONIC SUBJECT MATTER. What constitutes an invention has been defined in Section 2 (1) (j) of Indian Patents Act, 1970. According to this definition irrespective of the fact the subject matter is method, machine, apparatus, or article it would be considered an invention as long as it is new, useful and involves an aspect of manufacture REQUIREMENTS TO APPLY FOR PATENTS Source: India. IP Applications must include : a. Name and complete address of applicant. b. Name, nationality and address of inventor. c. Title of invention. d. Details of patent applications filed abroad. If not granted, number , date, country and status of the corresponding applications, if applicable. e. Power of attorney signed by the applicant. f. Application form duly signed by applicants and inventors. g. Declaration of priority when necessary. In addition, the following documents must be attached to the application : h. Abstract of the invention, specification, set of claims and drawings if appropriate. i. Certified copy of the priority document. In case priority document is in a language other than English, an English translation thereof also needs to be filed. DURATION AND RENEWAL FEES Patents are granted for 14 years from the date of filing (7 years in case of food and drugs)and renewals are due annually from the beginning of the third year onwards. Note: If all documents have been filed, depending on the backlog in the Patent Office, the acceptance normally takes place within about 2 to 3 years from the date of filing of the application. Ashish Basu © July 2004
CSIR – Indian knowledge Center u CSIR set up Intellectual Property Management Division or IPMD in 1996. CSIR & IPMD file the largest no. of patents in India. Its international filing is doubling every Source: CSIR year. 1. 2. 3. 4. 5. CSIR’s Patestate provides assistance in Formulating an overall strategy for dealing with an organization's technical and knowledge-based resources Identifying and grouping technologies from the IP marketplace by putting together pieces of a large portfolio IP Portfolio Management Integrating Patent Strategy with Business Strategy Legal assistance for technology transfer-related issues Ashish Basu © July 2004
Why B. E College ? u This is an effort intensive endeavor, physical resource requirements much. Many of us believe that B. E. College has the necessary talen Universities, Universities of Tokyo, Osaka, Ritsumeikan Univ. in Jap in EU, UK have full fledged IP Departments now. . Only a few institutes in India have started focusing on this ! u In the past the outside perception has been that, B. E College is rela is adapting to the needs of the industry. In addition to fulfill its oblig students, the institution can take thought leadership in the area of I Property. u Good work in the area Intellectual Property area could strengthen th for upgrading the institution’s stature. u Intellectual Property licensing, IP consulting can be source of reven BE College. Ashish Basu © July 2004
Short term actions… u Create a 2 Member IP Cell attached to the VC’s office. The IP Cell shou inter-disciplinary in nature. The cell should have at least one external ( Stanford Univ, set up its OTL in 1969 ! Now 25+ people ). u The IP Cell should focus on the following – Written IP Policy guidelines for the institute Ø Create a Technology Licensing Organization or TLO Ø Organize the exiting research, records. Ø Participate in IP related consulting assignments e. g. IP Audit Ø Get connected with IPMD of CSIR & STPI Calcutta Ø Prepare a budget & plan for a full fledged IP Department by 2006 Ø Plan to submit a formal proposal to the Government Ø Plan at lest two in depth IP awareness workshops for the faculty and research scholars. Ø The institute should encourage members of the faculty to participate i related discussion forums, Govt. committees. Ashish Basu © July 2004
Long term actions… u Create a full fledged IP department. and TLO At least one member of th should have a legal exposure in addition to science/ engineering. Cre ongoing engagements thru’ CSIR, STPI. u Plan to offer an elective course on IP. Make students aware of their rig and obligations in the IP world. Allocate a percentage of the total rese funds towards IP creation. u Encourage departments and faculty members to create IP thru’ in hou research projects as well as industry sponsored research projects. Ev IP creation could be one of the review parameter for departments & fa members. u Seek assistance & guidance from the Global Alumni community towar creation e. g. distinguished Alumni could ‘co-guide’ Ph. D students. Ashish Basu © July 2004
Conclusion Attention: Interest: Awareness workshops, Seminars Desire: IP Cell, TLO, IP policy for the Institute Action: Engagement with CSIR, STP, IP Creation Thank You ! Ashish Basu © July 2004
Speaker Bio Ashish Basu Ashish completed his graduation from B. E. College (Civil Engineering) in 1983 and master’s from IIT Madras (Structural Engineering & Computer Aided Design) in 1985. Ashish started his career as a Structural/ CAD Engineer with a Delhi based consulting company. Over the last 16 years, Ashish has worked in various Sales/ Marketing/ Product Management roles for Information Technology companies in India, United States and Japan. Ashish’s exposure in Intellectual Property (IP) business started when he became a member of the founding team of Wipro’s Semiconductor Intellectual Property Business Unit (eventually spun off as a separate California corporation called En. Think Inc). Ashish contributed in setting up Wipro’s Japanese subsidiary & supervised En. Think’s IP business in Japan. Subsequently, Ashish headed Corporate Marketing, Asia Pacific Sales and Worldwide Sales functions in other IP companies. Ashish is currently the Vice president for Sales & Business Development at Interra Systems, based out of Interra’s headquarters in Santa Clara, California. He is actively engaged in the promotion and licensing of Interra’s IP’s in Electronic Design Automation & Memory Design in Asia and Europe and Ashish Basu © July 2004
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