Management of IPManagement of IP

Srividhya RagavanSrividhya RagavanAssociate Professor of LawAssociate Professor of LawUniversity of Oklahoma University of Oklahoma College of LawCollege of Law

Individual/ Corporate/ firm levelsIndividual/ Corporate/ firm levels

National & international levelsNational & international levels

What is IP ManagementWhat is IP Management

Creation Creation

ProtectionProtection

DefenseDefense

Maximization Maximization

Various IPs involvedVarious IPs involved TrademarksTrademarks

– Right to publicityRight to publicity– DilutionDilution– CybersquattingCybersquatting

CopyrightCopyright– Nature of the workNature of the work– Duration of copyrightsDuration of copyrights

Trade SecretTrade Secret

PatentPatent

Managing the Patent Managing the Patent PortfolioPortfolio

Protection Protection

Creation of patent rightsCreation of patent rights

Management & MaximizationManagement & Maximization– License & term extensionLicense & term extension

Defending infringementDefending infringement

Managing validity of competitor’s Managing validity of competitor’s patentspatents

Patent Management in the Patent Management in the International ContextInternational Context

Countries like India have a very short period Countries like India have a very short period under TRIPS to catch up with the developed worldunder TRIPS to catch up with the developed world– National legislations cannot compromise local issues National legislations cannot compromise local issues

for international prescriptionsfor international prescriptions– While TRIPS uses the US Model as the standard, US While TRIPS uses the US Model as the standard, US

patent model is a minimum threshold model – highly patent model is a minimum threshold model – highly liberalized and patentee favored modelliberalized and patentee favored model

– US model does not always apply to the rest of the US model does not always apply to the rest of the worldworld

Hence the need for patent Management Hence the need for patent Management strategiesstrategies

QuestionsQuestions

Substantive patent lawSubstantive patent law– Becomes more important in the light of Becomes more important in the light of

national legislation & international national legislation & international prescriptionsprescriptions

Procedural and operational details of Procedural and operational details of patent law patent law

– Important to create balancing Important to create balancing mechanisms between trade and welfaremechanisms between trade and welfare Sec 3 of the Indian Patent Act is an example. Sec 3 of the Indian Patent Act is an example.

Levels of patent management Levels of patent management strategiesstrategies

Reading national legislations & adapting Reading national legislations & adapting it to local needs at different levelsit to local needs at different levels

Japan is a great example of successful Japan is a great example of successful management of national patent regimemanagement of national patent regime

Copied from the west but tailored to suit Copied from the west but tailored to suit national needsnational needs

Substantive IssuesSubstantive Issues

Doctrine of equivalents (DOE)Doctrine of equivalents (DOE) In the US, DOE a tool for infringement - In the US, DOE a tool for infringement -

Winans v. Denmead – late 1800sWinans v. Denmead – late 1800s– Accused inventor does not copy ‘literally’ Accused inventor does not copy ‘literally’

but makes ‘unimportant’ & ‘insubstantial’ but makes ‘unimportant’ & ‘insubstantial’ changes. changes.

Considered the application of the Considered the application of the doctrine in Warner Jenkinsons in 1997doctrine in Warner Jenkinsons in 1997– Infringer introduced a dye that was exactly Infringer introduced a dye that was exactly

the same as WJ’s except for a PH of 6the same as WJ’s except for a PH of 6

Patented DyePh of 6 to 9 Infringer: Ph of 5 Prior art: Ph above 9

Fed Circuit felt that it was equivalent - Fed Circuit felt that it was equivalent - SC reversedSC reversed

During prosecution, it was revealed During prosecution, it was revealed that WJ had during prosecution altered that WJ had during prosecution altered the claims to traverse Booth patentthe claims to traverse Booth patent– PH of above 9PH of above 9

Hence, there was a question of Hence, there was a question of whether prosecution history estoppes whether prosecution history estoppes the application of DOEthe application of DOE

That lead to Festo in 2003That lead to Festo in 2003

Liberalization of DOELiberalization of DOE Courts decided that prosecution Courts decided that prosecution

history estoppel limits the applicability history estoppel limits the applicability of DOE for narrowing amendments – of DOE for narrowing amendments – forseeability barforseeability bar

Created a mess as far as infringement Created a mess as far as infringement analysis is concerned analysis is concerned – Judge and Jury issue also interferes Judge and Jury issue also interferes

Each of these were progressive Each of these were progressive holdings that were specifically tailored holdings that were specifically tailored to favor the patenteeto favor the patentee

Tsubakimoto (1998) set the standard in Japan for an equivalents dispute– It did not liberalize by following the US– Instead, set its own standards based on

the Japanese national needs

Tsubakimoto Following are the equivalents guidelines in

Tsubukimoto Whether the differing elements are non- essential

elements Whether the object of the patented invention can

be achieved and the same effects can be obtained by interchanging as above,

Whether both the products could have been made at the time of patent application

Any factors suggesting that the accused device is intentionally excluded from the scope of the claim during patent prosecution.

If the patentee intentionally seemed like excluding the technology – prosecution history will apply

The Japanese Judiciary has been very The Japanese Judiciary has been very active in streamlining patent disputes.active in streamlining patent disputes.– The court has legislated key reforms to

trigger a better and faster resolution of patent disputes in Japan - Wegner.

– Eg: Texas Instruments v. Fijitsu – for the first time, an accused infringer could use the invalidity defense in court.

– Before that it could be used only in the JPO level

– The court held that however, until JPO conducts its trial and officially invalidates the patent, the patent right would exist in rem

Reacting to the judiciary, the JPO made key reforms, first, speeding up the Trial for Invalidity and then, supporting statutory reforms that became effective in 2004

Thus, is the complimentary role of the court and JPO that India should seek to emulate.

Japan has evolved one of the most reliable systems of patent claim interpretation of any country in the world.

Other instances of Japanese Other instances of Japanese leadershipleadership

Voda CordisVoda Cordis: US courts have used : US courts have used Paris Convention to hold that if a US Paris Convention to hold that if a US patent is infringed by a US citizen on patent is infringed by a US citizen on a foreign soil, there would be no a foreign soil, there would be no damages for the foreign element. damages for the foreign element.

Japan like Europe favors transnational Japan like Europe favors transnational enforcement to help patentee avoid enforcement to help patentee avoid litigation costs – Marine Bio disputelitigation costs – Marine Bio dispute

Other important features – PTO Other important features – PTO proceduresprocedures

Japan has an allowance rate of 29% (unlike the Japan has an allowance rate of 29% (unlike the US where the rate is some 80+%)US where the rate is some 80+%)– JPO rejected about 14.6 % of patents granted by the JPO rejected about 14.6 % of patents granted by the

USPTO USPTO Specifically, of those patent applications granted by the Specifically, of those patent applications granted by the

USPTO, 29.6 % were withdrawn at the JPO. USPTO, 29.6 % were withdrawn at the JPO. – Applicants recognizing the greater scrutiny patents Applicants recognizing the greater scrutiny patents

receive at the JPO receive at the JPO give upgive up the hopeless cases that are the hopeless cases that are nevertheless prosecuted to issue in the United States nevertheless prosecuted to issue in the United States

USPTO has about 5000 examiners unlike in Japan USPTO has about 5000 examiners unlike in Japan which has a total of 1500 which has a total of 1500 – Small is efficient Small is efficient

Japan achieves this level of efficiency by Japan achieves this level of efficiency by prioritizing back-end operationsprioritizing back-end operations

Japan’s backend modelJapan’s backend model

Japan provides a deferred examination of its patent application by piggybacking off of foreign search and examination results

Places premium on appeals and post-grant review – versus one 1% in the United States (30 % of JPO workforce does post-grant review)

Japan sports one of the best models of post-grant review.

Even hiring decisions are very different– US concentrates on PhDs and suffers

from very high turnover (US turnover is 135% of Japanese workforce)

– Japan hires analytical smart graduates without emphasis on level of education but with minimum qualifications

India can take a lot from the Japanese India can take a lot from the Japanese experience in how they understood and experience in how they understood and later, fine tuned the patent system. later, fine tuned the patent system.

Instead of blindly copying the defective Instead of blindly copying the defective American model, it is important to look American model, it is important to look at other models to evolve a truly at other models to evolve a truly desi desi patent regime within the confines of patent regime within the confines of TRIPS. TRIPS.