securing intellectual property – why you should care and what can you do about it?

Securing Intellectual Property – Why You Should Care and What Can You Do About It?

Dr. Biplav Srivastava, IBM Research – India

Oct 2015, I-CARE 1 (C) Biplav Srivastava, IBM Research

Outline

! Intellectual Property (IP) ! Why Care About IP? ! What to do About IP?

2 (C) Biplav Srivastava, IBM Research

What is Intellectual Property (IP)?

“Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce.”

http://www.wipo.int/about-ip/en/


Why Does IP Not Explicitly Cover (Technical) Papers?

! IP is asserted explicitly with publication from credits: author(s), organization(s) n  Monitoring is community-based n  Focus of papers is dissemination

! Focus of IP is legal protection and assertion n  Can be defended in courts


Why Care About IP?

Our focus will be patents in the remainder


Patent – An Introduction

! Are for novel, useful and non-obvious ideas

! Which had not been known earlier (read: published and available in public domain)

! First promulgated in modern times in 1790 n  Finds mention in US constitution n  Patent Act of 1790 (US)


Why Patents? Patents serve as documenta3on of an organiza3on’s Intellectual Property (IP)

n  Helps protect IP against compe33on (defensive) n  Helps assert market leadership in promising areas(aggressive)

n  Can become a significant income source from licensing

n  Helps realize a company’s full market valua3on


Asserting Idea: Apple Example

Idea created and patented by university USD 234M+ fine awarded on Apple Initially projected fine > USD 900

http://www.bbc.com/news/technology-34559232


IP (Patent) Grants and Defense

9

Defending Idea Nutmeg Example

(C) Biplav Srivastava, IBM Research

Example: Nutmeg

10

http://www.tkdl.res.in/

(C) Biplav Srivastava, IBM Research

Startup – Diabe.to Defending Idea Healthcare


Image courtesy: Diabe.to site

Startup – Diabe.to


What to Do About IP?


Suggestions

! Always think of IP as a first class task n  It is not always for commercial gain n  If one is opposed to the thought, one can

always document their idea and reveal for free ! Depending on context

n  Use copyright, trademark, design, patents, GI n  Writing papers and articles also helps assert

one’s claim on an idea


Do It Yourself

! Put © against any piece of new work for copyright assertion

! Register if it makes sense ! Be aware of IP considerations whenever

you discuss an idea


Patent Considera3ons Items Comments and guidance Problem statement and background

What is the specific problem the invention solves? What areas of business and technology need to be understood in order to evaluate the patent?

Core idea It is helpful to include a flow chart and or architectural diagram

Novelty Novelty is somewhat subjective. Just because someone has not invented it yet does not make your invention novel. Also, beware of "obvious combinations" of existing technologies, which usually will not pass muster with the USPTO.

Business case & value proposition

How can someone, preferably the assignee, make money using the invention

Prior art search & search terms used

Look for evidence of the invention or related concepts in academic, trade and patent literature.

Discoverability If the patent is issued, could we figure out if someone else is infringing on the idea (i.e. "practicing" the patent).

Enforceability - If we discover that someone has infringed on the idea, can we stop them (or charge them)

Ease of circumvention How easy is it to find a "work around" to the idea - i.e. can someone achieve the same result with a different idea? If so, the value of the patent is reduced.

Independent claims Balance breadth & technical specificity. 16 (C) Biplav Srivastava, IBM Research

An Inventor on a Patent

! Under US patent law, a person should be listed as an inventor for a US patent applica3on only if that person contributed to the idea shown in one of the claims of the applica3on

! One is not a co-‐inventor for just n  Sugges3ng an idea n  Coding the steps of the idea


What Strategy Works for Creating Valuable Patents … Personal Experience

! Ideas in a new technology area n  IoT, Deep Learning, …

! Ideas around an emerging application n  Smart City, Law, Cooking, …

! Thinking of a portfolio of ideas together n  Helps reuse effort in prior art search n  Easy to detect violation and assert claims n  Easier to commercialize


References

! International patents n  www.uspto.gov/ n  https://www.epo.org/

! India patents n  www.ipindia.nic.in/ n  http://www.ssrana.in/
