Intellectual

Property-
Protection Management &
Risks
Presented by:
Nishant Kewalramani
Portfolio Manager
 AGENDA

 Maximizing IP for Start Ups-

Protection Strategy

 Cost
Effective ‘Protection
Management’ of IP

 Avoiding IP Risks





 PROTECTION
MANAGEMENT
 Protection Strategy

 Do VCs sign non disclosures?


 Strategy: Minimum Expense-
Maximum Advantage

 Building a wall around the IP




 PATENTS

 Identifying core technology area


 Make,
 Use,
 Sell,
 Offer for Sale and
 Import
 Technology development
Identification Aids
 Competitor Watch-
 Constant update on your competitors
 Concentrate on big companies
 Decides direction of your core
technology


 Landscape analysis
 A landscape of all patents in a
technology domain

 Pre-Filing Filtering

 Do not approach the patent attorney

without Homework!!!

 Understanding patentability criteria for
initial filtering purposes.

 To begin with- you are the best judge of
your invention

 Quality
of patents more important than
number of patents

 Patentability Requrements
INVENTIONS

Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS
© Brain League IP Services Pvt. Ltd
 Provisional Filing

 Onlydescription of the Invention

required

 Secures the priority date

 12 months for filingcomplete
application with claims

 Better bargaining position
Multiple inventions in one
application
 Unity of invention

 Divisional application
 PCT filing

 FilePCT instead of Complete if more

time required

 31months to file national phase
applications

 More expensive than a complete
filing
 Trademark Filing

 Not as expensive as patents



 Choose a word that catches

attention and is ‘not descriptive’ of
the goods and services


 Intentto Use application/ Proposed

to Use
 Can get registration without use
 Can continue to hold rights over the
Copyright Registration

 Inexpensive

 Long duration of right

 Marketing materials, imp documents,
websites etc.

 Strengthens the wall of protection

 Adds value to the entity
 Not Disclosing =
Protection
 Notimportant enough/Cannot be
covered under any other IP

 Noregistration required for Trade
Secret Protection

 Maintain
Secrecy- Employee
agreements, non disclosure
agreements etc.
Decide what to maintain


 PCT Application ≈ Filing in two
jurisdictions

 Stronger portfolio- negotiating
advantage



 IP RISKS
 PATENT RISK

 Search not comprehensive


 Non accessible data

 18 month lag

 Non patented material
FIRST SALE EXHAUSTION &
PARALLEL IMPORTS
 Sale- rights over the item exhausted

 Import of patented articles from
other countries.

 Can be due to price discrimination
 FTO ANALYSIS

 Freedom to Operate

 Product analyzed against national
patents

 Also known as Patent Clearance.

 18 month lag

 Further Limitations in India
NOTICE- INNOCENT
INFRINGER
 Notice-
patent with no./patent
pending

 Without patent no. not considered
notice

 Damages may not be awarded

 Flows both ways
 Trademark Risk

 Non registered user has a right


 Cannot use anything resembling a
famous mark

 If not registered- proving ‘notice’
very difficult
 OPEN SOURCE- RISK

 Open Source Software


 May compel you to make your
improvement free.

 Analyze
the kind of conditions
attached with the license.


 THANK YOU


 nishant@brainleague.com