ip case study and capability statement

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IP Capability Statement & Case Study

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Page 1: IP Case Study and Capability Statement

IP Capability Statement &Case Study

Page 2: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

PARTIAL CLIENT LISTDefence Institute of Advanced Technology

Centre for Development of Advanced

Computing (C-DAC)

Hyundai

Tata Consultancy Services (TCS)

Tata Technologies (TTL)

Impetus and Intellicus

Pidilite Industries

HCL

Tech Mahindra

Procter & Gamble (P&G)

Huawei

Cisco

China Mobile

ZTE

Sony

Agami Electronics

About Legasis

Legasis stands for Legal System and Integrated Solutions.

Incorporated by professional lawyers in 2006, Legasis focuses on

'Fusion of Lawyering and Information Technology.' Legasis caters to

General Counsels and Law Firms across the world. We understand

the requirements of General Counsels, limitations of Law Firms and

the consequential gap between what is expected by the corporate

sector that cannot be delivered by practicing lawyers. This critical

evaluation has led us to conceptualize and develop a clear set of

Legal Support Services (LSS).

Over the past ten years Legasis has emerged as a Special Enterprise

with high Ethical Quotient. Our innovative approach of providing

integrated solutions has been recognized by our clients as reflected

in their continued relationship with us. At Legasis, we are proud of

our people. Our people come first to us. We are a team of over 160

dedicated professionals with 25 focusing on the IP practice. We

believe in Performance, Efficiency, Accountability and knowledge

(PEAK). As a part of our people first philosophy we ensure each

person participates in the enterprise. State of the art IT systems

enable us to be efficient in our deliveries. Each one of us is

accountable to our client and our profession. We embody a high

degree of the Knowledge Factor (K-Factor) through well-defined

K-Management initiatives in K-Application, K-Retention and

K-Enrichment. With equity capital of over INR 10 million, Legasis is

a financially robust company with a proven track record, consistent

profitability, healthy revenue streams and impressive order book

position. Our financial statements bear ample testimony to the fact

that Legasis has successfully transitioned from being a start-up to

an enterprise with high growth trajectories. We cater to over 600

clients across 43 countries with a predominant focus on IPR and

Compliance & Ethics.

COMPANY DESIGNATIONS

ISO 9001:2015 & ISO 27001:2013 certified

Page 3: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

IP Capability StatementPATENTPatentability Search

Patent Drafting and filing

Patent Prosecution

IPAB appealsAdvisory

Freedom to Operate

Infringement Analysis

Invalidity Searches

Landscaping and Claim

mapping

PCT filing

International filing

Portfolio Management

Recordal Assignment

Opposition & Litigation

CreationAdvice on IP Strategy

IP Audits

IP Training

Patent and Trademark

Searches

TrademarkSearch and file Trademark

Prosecution

Advising on filing

National & International

filing

Madrid Filing

Renewal

Recordal Assignment

Opposition & Litigation

DesignPreparing and filing

Prosecution

National & International

filing

Renewal

Recordal Assignment

Cancellation of Design

EnforcementObtaining Injunctions and

monetary relief

Handling opposition

proceedings

Assistance in enforcing IPR

globally

Key DifferentiatorsStrategic Solution: Comprehensive Docketing software solution for Patent, Trademark, Copyright and

Design

Global Benchmarked Standards and Processes: In Legasis, we follow the best practices implemented by

the experienced attorneys around the world specifically with respect to drafting and prosecuting patent

applications

Dedicated Resources: Domain Expertise in Mechanical, Automotive, Electrical, Electronics, Software,

Telecom, and Pharmaceutical

Employer Testimonials: With nearly a decade under our belt, delivering high performance employees and

customized solutions to dozens of government institutions and private corporations, we continuously

strive for excellence and gain employer’s trust and confidence

Client-Driven Focus: Our main concentration is on customizing strategies and programs around our

employers’ needs to maximize operational efficiencies while minimizing spending

Page 4: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

Our Experience

Corporate Experience Legasis Services has successfully supported corporate clients, including non-profit organizations, technology firms and corporations

Drafted and prosecuted thousands of patent Applications across jurisdictions including India, US, Europe, UK, Australia, New Zealand, Japan, China, South Africa

Thousands of patents applications have been granted across jurisdictions

Filed more than 2000 Designs from which over 1000 have been granted till date

Performed numerous Patent Searches, FTOs, Infringement Searches, Validity Searches, Landscapes, and others

Litigating several Patent and Trademark matters in several Indian Courts

Ranked amongst the Top 1000 IP Practices in the World by IAM for 3 years in a row

Government Experience Empanelment: Legasis is empanelled for IPR service with NRDC, TIFAC, C-DAC, DRDO, and ICAR International Universities: China Academy of Telecommunications Technology, Universitat de Barcelona, Universitat De Valencia, National University Corporation (Tohoku University), University of Lincoln, University of Birmingham, Nanyang technological university, Queensland university of technology

Indian Universities and colleges: Anna University, Incubates at the Indian Institute of Technology Bombay, College of Engineering, Pune

NGO: Rashtriya Lifesaving Society, Deepasthambha Charitable Trust, Talent Foundation

Others: Mahratta Chamber of Commerce and Industries MCCAI, National Institute of virology, Indian Statistical Institute

Page 5: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

Case Study – Tata Technologies Ltd.

About electric MObility (eMO™) eMo Electric Vehicle was built by Tata Technologies’ Vehicle Programs & Development (VPD) Group with more than 300 engineers operating from its four automotive engineering centres of excellence worldwide – Pune (India), Detroit, Coventry (UK), and Stuttgart (Germany). eMO™ architecture emphasizes “right size” personal urban transportation by minimizing its exterior footprint and maximizing interior space; including seating for four adults. Based upon research of city/urban usage, eMO™ has the flexibility – with rear seats articulated – to do double-duty as a personal cargo carrier, without the mass and cost of a dedicated trunk. To reduce the overall carbon footprint of the manufacturing, assembly and other associated processes, Tata Technologies eliminated the traditional body shop and paint process, and utilizes many green product materials in eMO™.

Legasis’ RoleLegasis helped Tata Technologies in drafting and Prosecuting 15 patents, 4 Design, and 1 Trademark across several jurisdictions. Out of 15 applications, 5 have been granted (‘2’ in US, ‘1’ in China, ‘1’ in Canada and ‘1’ in Europe) and the remaining ‘10’ applications have been published in respective jurisdictions. In addition to Patents, Legasis has also been able to successfully register ‘2’ design applications for eMO™ in India.

"The team from Legasis has always been a pleasure to work with. Our electric mobility project involved analysing and creating a Patent, Trademark and Design portfolio for a unique, original, and highly innovative electric vehicle. The IPR team at Legasis delivered not only high quality services but also made an extra effort to deliver above expectations." -Kevin Fisher President of Vehicle Programs & Development, Tata Technologies

Page 6: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

Case Study – Aagami Lighting Technologies (Commercialization of Patented Technology)

Executive Summary Legasis Services has helped Mr Shirish Deshpande and his company in commercialization of a patent claiming a novel LED light fixture. The patent was conceived in Pune, India and was filed in the United States Patent and Trademark Office (USPTO), UAE, China, Europe, and Japan. The invention, through its conception stage, was closely inspected and understood by the IP team at Legasis. Further, extensive discussions were held between the inventor, Mr Shirish and the team, at each point in the lifecycle of the patent application, including patentability search, drafting of the patent application and also during prosecution of the patent application. The patent application was eventually granted in all jurisdictions and a licensing deal worth USD 15 million is signed.

IntroductionThe case study will provide an insight into the process Legasis implemented in understating the invention, identifying the priorart, drafting the patent application, and prosecuting the patent application for getting a grant. The timeline of the entire process and steps to expedite the disposal of the patent application for a grant would be discussed. Further, a brief about the commercialization of the patent application would also be discussed.

Technology of the inventionThe invention describes a novel lightning fixture that uses waste/residual heat to generate a natural air convention current for heat dissipation. The invention takes advantage of a vent having cross section varying throughout the length and thus has a better heat dissipation efficiency. This is due to the fact that a varying cross section is better suited for creating an air current convection, throughout the length of the integral vent, such that hot air from the lighting fixture is pushed out from the first opening of the vent to the second opening of the vent.

The timeline for the caseThe team at Legasis initiated discussions about the invention with Mr Shirish around the month of December 2011. The team was instructed to file a Provisional Patent Application in the Indian Patent Office. In order to ascertain the novelty of the invention, an exhaustive patent search was conducted by the team. The report of the search was shared with the inventor around mid-week of January 2012. After identified priorart were thoroughly discussed with the inventor, the team proceeded with the drafting of the patent application. The Provisional Application was filed on Feburary 15, 2012 in the Indian Patent Office. The Complete After Provisional (CAP) was eventually filed on Feburary 19, 2013. The CAP was published on November 29, 2013. After carefully studying the market for the invention, it was mutually decided with the Applicant that the patent application should be filed in the United States, GCC, and Europe.

Page 7: IP Case Study and Capability Statement

Email: [email protected] / Web: www.legasis.in

Case Study – Aagami Lighting Technologies (Commercialization of Patented Technology)

Disposal of the patent application As seen from the above timeline, Legasis was able to get a grant for the US Patent Application in less than 36 months. The patent application was filed in August 2014 and the notice of allowance was received in July 2016. The quality of the patent draft was such that the rejections presented in the Office Action were easily overcome. Further, timely coordination with the inventor, and an Examiner interview in due course, helped the inventor to get an expedited grant without getting caught up in the vicious circle of USPTO patent prosecution, thus avoiding incurrence of high costs.

CommercializationThe patent application was subsequently also filed in the Patent Office of Cooperation Council for the Arab States of the Gulf (GCC). The application was granted at the GCC Patent office. This led to initiation of discussions with interested stakeholders in the gulf, for licensing of the granted patent. The discussions proved fruitful and Mr Shirish was able to get a deal worth USD 15 Million from a Saudi Arabia company for manufacturing the LED light fixtures for street lighting in few gulf countries. The Legasis team aided Mr Shirish throughout the entire commercializing process.

ConclusionThe Legasis team with its focused efforts right from the patentability search to the patent prosecution stage was able to not only draft an application that was timely granted but also guided Mr Shirish to carefully chalk out a commercialization strategy in order to gain maximum profits. The Legasis team was instrumental in getting the entire process of the patent grant hassle free and interactive.

Legasis Services Pvt. Ltd.B-105, International Convention Centre,Senapati Bapat Road,Pune. 411016, Maharashtra, India+91 20 3029 4000 +91 20 30221012