Ipr, Intellectual Property Rights

VIKRAM DAHIYA IIM-ROHTAK All About Intellectual Property Rights

Value Creation ??? Wealth Generation ?? Wealth Realisation ??

Consumption Daily 6/29/2004 Beijing – 50,000 Counterfeit LV Bags Destroyed The local Technical Supervision Bureau (TSB) in Beijing destroyed 50,000 Louis Vuitton bags, worth RMB5 million. LV’s agent in China witnessed the destruction of the seized bags. China Intellectual Property News 7/3/2004 Guangdong – Biggest Trademark Infringing Case Guangdong AIC recently released information on a trademark infringing case with an estimated total value of RMB11 million. The infringing products seized were mainly sportswear labeled “NIKE,” “Adidas,” and other brands. Some of the infringing shoes included “NIKE” designs that are scheduled to be launched in 2005.

In 1970, the French designer Yves Saint Laurent (YSL) created and successfully marketed a long black sleeveless tuxedo-like evening dress, which the YSL fashion house reintroduced in their 1992 collection. Ralph Lauren was selling a similar version of the dress in their 1992 collection. YSL brought suit against Ralph Lauren under copyright infringement, design infringement and unfair competition. May 1994: The court in Paris decided in favor of YSL Court concluded that YSL owned the 1970 dress design under the law on Designs and Models and also considered the dress design an original copyrighted creation. YSL was awarded damages of FFr 2 million. [50% for copyright infringement and 50% for damages resulting from unfair competition. Yves Saint Laurent vs. Ralph Lauren

Framework for Societal Governance Private Public Producer Consumer Industrialized Economies Developing Economies Balancing of Interests “ Private Interest Must Yield Public Good” Monopoly Competition

Ownership Rights Responsibilities

ACCESSIBILITY vis-a-vis AFFORDABILITY

Controlling Counterfeiting …… .A never ending challenge

I have an innovation .... How do I protect it in the market ??? Patent Trademark Copyright Design Registration Trade Secret Geographical Indications

TRADEMARK COPYRIGHT TRADE SECRETS IPR TOOLS SERVICE MARKS LAYOUT DESIGNS FOR INTEGRATED CIRCUITS ANTI COMPETITIVE PRACTICES IN CONTRACTUAL LICENSES PROTECTION OF NEW PLANT VARIETIES GEOGRAPHICAL INDICATIONS DESIGN REGISTRATION PATENT

STRATEGIC ELEMENTS PROTECTION OFFERED BY EACH ONE OF THE TOOLS PERIOD OF VALIDITY GEOGRAPHICAL LIMITS ENFORCEMENT FEATURES LICENSING ISSUES, BENEFIT SHARING OTHER LEGAL IMPLICATIONS A clear appreciation of these…. Imperative for all IPR players INTELLECTUAL PROPERTY RIGHTS pganguli©1998

Gillette Manufacturers of male and female grooming products, writing instruments and correction products, tooth brushes, oral care appliances, and alkaline batteries. Products include blades, razors, shaving preparations and hair epilation devices among others. Internationally recognised brand names such as BRAUN, PARKER PEN, WATERMAN, LIQUID PAPER, ORAL B, DURACEL….. Flagship Brand .. GILLETTE Products protected and nurtured by Trademarks in various parts of the world

Gillette Information source : PRICEWATERHOUSE COOPERS publication “ Valuation of Intellectual Property”

Managing IPR … A framework Product and Services Portfolio .... Strategic Intent Market and Competitor Positioning Innovation strategy and IPR plan Protection needed vis-a-vis existing Intellectual Assets Business Mission

Options available to the IPR Holder Exploit the IPR himself License the IPR to another party (s) with mutually negotiated benefit sharing arrangements Cross License for mutually independent working and / or collaborative working Assign the IPR to another party (s) for an appropriate return Barter rights Establish a franchise system involving other parties Take action against those who infringe his rights Let the rights selectively lapse in certain countries

Realising Value Valuation of Knowledge and IPR Licensing of IPR IPR Insurance IPR as a collateral

How does one realise the value of one’s intellectual assets A structured audit is necessary

Calvin Klein Inc. announced last week it has signed a licensing deal with an affiliate of Italian manufacturer Fingen SpA to reintroduce CK Calvin Klein clothing line and accessories in Europe and the Middle East starting next spring. German luxury automaker Porsche and its licensing and trading company Porsche Lizenz- und Handelsgesellschaft mbH & Co KG (PLH) intend to push the worldwide expansion of the Porsche Design brand and to introduce a new store concept along with new licenses, including men’s sportswear line, reports fibre2fashion.com . » Expectations High for Beyonce`s Ready-to-Wear Line » International film and recording star, Beyonce Knowles, today announces a joint venture with Arthur and Jason Rabin. This partnership will provide the infrastructure for licensing and brand management to the new Beyonce fashion label. In turn, Beyonce Source: fashiongates.com Hello Kitty – New Jewellery Collection by Kimora Lee Simmons and Judith Leiber Hello Kitty's parent company, Sanrio, signed a licensing deal with powerhouses Judith Leiber and Kimora Lee Simmons to produce a luxury accessory collection of the girls' icon . » Calvin Klein Expands Bridge Business PHL Plans Worldwide Expansion of Porsche Design

IPR Strategies Effective use of International Conventions Strategic options in the statutory provisions e.g. divisional applications, continuation, and continuation in part Extending life of an invention e.g. Claritin Joint IPR IPR Leveraging IPR Litigation as a strategy

IPR Portfolio Building Seed, nurture, cultivate and harvest Inventions to create the Present, Immediate Future and distant future portfolios Measuring IP Performance

Beware !!!! Seek usage clearance Public Testing of Inventions Premature disclosure of information

Institutional IPR Policy Integrating IPR into business strategy & project management Effective Use of IPR information Identifying areas of possible infringements Licensing strategy Policing of institutional IP assets Litigation strategy IPR audit Effective utilisation of International Conventions. Institutional Imperatives

Professor Prabuddha Ganguli CEO “ VISION-IPR” 201 Sunview Heights 262 Sher-e-Punjab, Andheri East Mumbai 400 093 [email_address] Building Competitive Edge Patents and Designs Registration…… a few case studies

Anatomy of a Patent Title, Inventors, Assignees, Date of filing, Date of Publication, Date of Grant, A, International Classification, National Classification Application number, Patent Number; Abstract BACKGROUND OF THE INVENTION Description of the Prior Art SUMMARY OF THE INVENTION BRIEF DESCRIPTION OF THE DRAWINGS DETAILED DESCRIPTION PREFERRED EMBODIMENTS Claims

International Fashion Machines. ELECTRIC PLAID PRODUCT SPECIFICATIONS! Is it a computer display or a hand woven textile? IFM's Patent Pending Electric Plaid TM looks like a beautiful, soft textile artwork, but changes color like a computer display. IFM's Electric Plaid is a unique textile display technology and design material. It is used by IFM to create hand woven, sensuous individual artworks, interior design and architectural surfaces. Electric Plaid combines woven electronic circuits, color-change inks and drive electronics, to add TIME AND MOTION to textile patterns and design. Patterns change color slowly over time, to give you information or change the decor of the room. Electric Plaid is a reflective (it doesn't light up!) color-change medium. Electric Plaid can be combined with IFM's textile sensors, StitchSwitch, to create fully interactive textiles and INTERACTIVE ARTWORKS artworks Electric Plaid™ Patent-Pending Color-Change Textile Panels StitchSwitch™ Embroidered and Woven Light Switches Woven and embroidered touch sensors for controlling lights or other electronic devices in the home.

A sewing machine is a mechanical (or electrical) device that joins fabric, using thread, in a manner similar to manual sewing. Sewing machines make a stitch, called a sewing-machine stitch, using between one to four stitches. They include means for gripping, supporting, and conveying the fabric past the sewing needle to form the stitch pattern. Most home sewing machines, as with many industrial machines, use a two thread stitch called the lockstitch. Some other common machine types are chain stitch machines and sergers. Sewing Machines…A case study on Innovations…… Stitch in time with IPR Mission: A machine to replicate hand-sewing.

Sewing Machines Altered needles in the form of a fine steel hook to create a form of chain stitch 1755 ; Charles Fredrick Wiesenthal, awarded British Patent No. 701 in for a double pointed needle with an eye at one end which enabled it to pass through the cloth by a pair of mechanical fingers and grasped on the other side by a second pair. 1790; Thomas Saint awarded British Patent No. 1764 which had an overhead arm for the needle and a form of tensioning system. 1795-1830; various patents awarded for chain stitch machines of varying types but non satisfactory functioning.

Sewing Machines 1830; A French tailor Thimonnier Barthelemy awarded a French patent It used a horizontal arm mounted on a vertical reciprocating bar, the needle-bar projected from the end of the horizontal arm. The cloth was supported on a hollow, horizontal fixed arm, with a hole on the topside, which the needle projected through at the lowest part of its stroke. Inside the arm was a hook, which partly rotated at each stroke in order to wrap the thread (fed from the bobin onto the hook) around the needle at each stroke. The needle then carried the thread back through the cloth with the upward motion of its stroke. This formed the chain stitch, which held the cloth together. The machine was powered by means of a foot pedal with the stitch formed on the top of the cloth, not the bottom as with most other prior chain stitch machine made . Need felt for lock-stitch for strength. A lock stitch is created by two separate threads interlocking through the two layers of fabric, resulting in a stitch, which looks the same from both sides of the fabric.

Sewing Machines 1834; Walter Hunt’s developed a machine that used an eye-pointed needle (with the eye and the point on the same end) carrying the upper thread, and a shuttle carrying the lower thread. The curved needle moved through the fabric horizontally, leaving the loop as it withdrew. The shuttle passed through the loop, interlocking the thread. The feed let the machine down – requiring the machine to be stopped frequently to set up again. No patents filed. 1846; Elias Howe patented a machine that used a similar method to Hunt's, except the fabric was held vertically. The major improvement involved a groove in the needle running away from the point, starting from the eye

Sewing Machines Elias Howe did not succeed in finding investors in England and returned to the USA. He discovered that his invention was being infringed. He filed patent infringement suits against the infringers and eventually won his case in 1854 and was awarded the right to claim royalties from the manufacturers using ideas covered in his patent. 1851; American Patent to Isaac Merritt Singer’s machine That combined elements of Thimonnier’s, Hunts and Howe’s machines and used a flying shuttle instead of a rotary one; the needle was mounted vertically and included a presser foot to hold the cloth in place. It had a fixed arm to hold the needle and included a basic tensioning system. Howe sued Singer and won the case. Singer was forced to pay a lump sum for all machines already produced. Singer then took out a license under Howe’s patent and paid him $15 per machine.

Sewing Machines . Allen Wilson had developed a reciprocating shuttle, which was an improvement over Singer’s and Howe’s. However, John Bradshaw had patented a similar device and was threatening to sue. Wilson then went into partnership with Nathaniel Wheeler to produce a machine with a rotary hook instead of a shuttle. Wilson also invented the four-motion feed mechanism which had a forward, down, back, and up motion, which drew the cloth through in an even and smooth motion . 1850s more and more companies were being formed and were trying to sue each other

Sewing Machines . 1856 The Sewing Machine Combination was formed, consisting of Singer, Howe, Wheeler and Wilson, and Grover and Baker. These four companies pooled their patents, meaning that all the other manufacturers had to obtain a license and pay $15 per machine. This lasted until 1877 when the last patent expired. 1900s; The first electric machines started to appear. At first these were standard machines with a motor strapped on the side followed by motor into a casing. This was followed by computer controlled and use stepper motors or sequential cams to achieve complex patterns.

International Classification of Patents International Classification of Designs

Bernhardt v. Collezione Europa Fed. Cir. 2004) (04-1024) Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use. Specifically, the court found that Bernhardt's disclosure of the designs at a Pre-Market exhibition rendered the patents invalid. In addition, the court found that Collezione's products did not infringe the patents.

Fryett’s Fabrics Settles Hathi Design Infringement Claim Against Natural World Natural World’s Festival Elephant Fryett’s Hathi Decision in Favour of Fryett Payment of £55,000, together with undertakings from Natural World to withdraw its Festival Elephant cushion and to deliver up all residual stocks of that design to Fryett’s. Tessitura A R Export SRL manufactured for Fryett’s, as exclusive distributor, a distinctive cushion panel design known as Hathi, marketed by Fryett’s within its Porter & Stone collection from June 2000. By mid 2002 Fryett’s had sold over 45,000 metres of Hathi. Natural World then began to sell a similar design marketed as Festival Elephant at prices which undercut the Hathi product. Fryett’s flied suit against Natural World alleging infringement of copyright and seeking an Injunction and damages.

The Court ruled that the perfume, called Timmy Holedigger, could not under any circumstance be confused with Tommy Hilfiger cologne, nor could it be seen as a competing product trading on the designer's good will. Besides, Nature Labs LLC, sells numerous other parody fragrances for pets, including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports) and Miss Claybone (Liz Claiborne). The Court observed that the other trademark holders have accepted the parody and not challenged Nature Lab's Trademarks . Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC The US District Court in New York dismissed Tommy Hilfiger Licensing Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for dogs, does not infringe on the fashion designer and cologne maker's trademark. Nature Labs sells its perfumes in pet and novelty stores, packaged in batches of three similar bottles, bearing slogans like "strong enough for a man, but made for a chihuahua."

Shirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) Court Decision: Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However, Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original.

Shirin Guild vs. Eskandar Ltd and Another contd…….. Eskander Nabavi had been designing chenille and tweed sweaters of a wide, square design since early 1991 September 1991: Shirin Guild met Nabavi to negotiate production of loose fitting, square peasant style garments and agreed to let Nabavi produce square style garments from her design drawings bearing particular resemblance to a wide sweater designed by the designer Gigli Havelock a company produced samples for Nabavi based on the drawings of Shirin Guild and the Gigli sweater sample having a width of 100cm and a V-neck in contrast to the 88cm width and crossover V-neck of Guild's design. In due course a shirt and cardigan of the same square 100cm wide design of the Havelock sample sweater were also made.

Shirin Guild vs. Eskandar Ltd and Another contd…….. A partnership was formed between Shirin Guild and Eskander Nabavi along with two other persons with each partner having a 25 per cent share of profit. There was no agreement that any copyright or design right originally owned by Shirin Guild was to become partnership property. Therefore Shirin Guild remained the sole owner of those rights. Partnership was terminated in August 1992. Almost a decade after the partnership was dissolved, Shirin Guild filed a suit claiming that - ** Eskander Nabavi had copied her designs to set up his own range of square and wide styles of shirt, sweater and cardigan, in competition to her. ** Her garment designs were protected by copyright as works of artistic craftsmanship, or alternately their shape and configuration was protected by design right.

Shirin Guild vs. Eskandar Ltd and Another contd…….. The key task before the court was : Whether or not an article was a work of art was whether the maker had the conscious purpose of creating a work of art.

Shirin Guild vs. Eskandar Ltd and Another contd…….. Observations by the court : The samples of the Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However they are examples of new developments in the fashion world.

Shirin Guild vs. Eskandar Ltd and Another contd…….. If a sufficient level of independent skill and labour was used to modify an existing design, an original design would result for copyright and design purposes. Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Though other designs featuring the wide look existed in the relevant design field of ladies luxury fashion, the essential features of Shirin Guild's designs were not commonplace and therefore, she succeeded in her claim of design right infringement.

CONTESSA FOOD PRODUCTS, INC. v CONAGRA, United States Court of Appeals for the Federal Circuit 01-1157 CONTESSA FOOD PRODUCTS, INC. (formerly known as ZB Industries Inc.), Plaintiff-Appellee, v. CONAGRA, INC. (doing business as Singleton Shrimp Company and as Meridian Products), MERIDIAN SEAFOOD PRODUCTS, INC., and OCEAN DUKE CORPORATION United States Court of Appeals for the Federal Circuit 01-1157 DECIDED: March 13, 2002

U.S. Design Patent No. 404,612

On remand, the district court is instructed to consider features, in addition to the arrangement of the shrimp on the top of the tray, regarding the underside of each of the accused products visible after the packaging is removed. The overall features of the top, side and underside of the accused products must be compared with the patented design as a whole as depicted in all of the drawing figures to determine infringement. Because the district court did not fully consider the underside of the tray illustrated in Figure 4 of the `612 patent when applying the "ordinary observer" test, we vacate the decision granting summary judgment of infringement and remand for further proceedings consistent herewith.

Professor Prabuddha Ganguli CEO “ VISION-IPR” 201 Sunview Heights 262 Sher-e-Punjab, Andheri East Mumbai 400 093 [email_address] Creating Institutional IPR Policies

idea stage ..Technology development Freezing of options Position in the protected Technology grid Idea Feasibility Ideas demonstrable Ideas Actionable Idea into product/process Marketable Products/Processes Alignment with market time Realisable Value of IP to Potential Value of IP Market acceptability Competitive sustenance IPR Management Product Lifecycle Value addition to Organisation & Market Hi to Low Risk p.ganguli©2003 IPR Enabled Knowledge Incubation and Wealth Realisation

CONCEPTS INNOVATION PROCESS OUTPUT MARKET Business Opportunities Technology Options ( mapping exercise ) Strategic Options Working through the IP grid Patents & other IPR Filings/Registrations Strategy for Foreign Filings Licensing Options Joint Developments Fit in IPR Portfolio Marketing tieups Product Lifecycle Managing IPR Portfolio Monitoring IPR Policing IPR Enforcing IPR Record Maintenance & Updating IPR Information Managing Intellectual Property

What do we do ? Formulate Institutional IPR Policy Institute Information classification policy How do you sign MOUs Make all employees aware of the IPR and information classification policies Users at unit level made aware of issues & responsibilities. Manual of best practices. Set up patent information service Structured annual training and awareness workshops Protection … establish a continuous process

The IP Policy Process Recognise the Vision and Mission of the Institute What are the various activities your institution is involved in Interaction of the Institution with the outside world Interactions within the institution What is the human resource policy the institute say vis-à-vis benefit sharing arrangements, etc.

The IP Policy Who will sign on behalf of the organisation Which will be the team to advise on IPR issues…. MOUs, protection, etc. What will be the channel to get it going on the floor. Who owns what?.. Documentation? Disclosures? Who will pay for the protection?

The IP Policy When can the Institute Name or Logo be used? Faculty participating in courses outside… Can Institution name be used? What will be the mechanism to identify Institutional IPR infringements or activities in the market that are damaging to the Institute’s reputation? Who will initiate actions?

Motivation for IP Protection and Management IPR Management helps to integrate the institution’s innovation process with a wide range of R&D partnerships Institutional IPR encourages partnership with other developers especially with SMEs in the innovation supply chain. Optimal use of extra-institutional knowledge. Avoid duplication and manage funs for R&D effectively

What the Institutional IP Policy Should Lead to….. Achieving the VISION and MISSION of the Institution. Stimulation of creativity and inventiveness through Framework for Competence and Knowledge Building Rationalisation of investment in human and capital resources. Avoidance of duplication of R&D Optimal use of “Extra-institutional” knowledge Integration of the Institutional Innovation Process with a wide range of R&D and Business Partnerships ©VISION-IPR 2002

What the Institutional IP Policy Should Lead to….. Timely Protection and Management of Institutional Knowledge Assets… Encouragement of partnership with other developers especially with SMEs in the Innovation Supply Chain.. Earnings from innovations to pay for further research and acquiring other technologies ( e.g. licensing and cross-licensing) Recognition to inventors and enhancement of ethical standards in the Institution Transparent Benefit Sharing from IP earnings .

What the Institutional IP Policy Should Lead to….. Creating and retaining leadership in the Knowledge Market. Academic Freedom to operate in a global environment. Guarding the Institution from taking on undue Financial and Legal liabilities. Effective enforcement of Institutions IPRs Enhancement of Institutional Image Assuring Long Term Growth of the Institution .

Professor Prabuddha Ganguli CEO “ VISION-IPR” 103 B SENATE, Lokhandwala Township, Akurli Road, Kandivli East, Mumbai 400101 Tel: 91-22-28873766 e-mail: ramugang@vsnl.com Developing a Business Oriented Curriculum and course Material for IPR for NIFT

Key points to consider NIFT’s Mission Sensitising Students to face a fierce global competitive environment Creating Frameworks for NIFT Students and Faculty to derive optimal value for their creations Effectively networking with commercial organisations Upgrading professional skills in Indian Industry Creating new career options in a niche area of global significance.

Creating IPR informed professionals in fashion industry ... not necessarily experts

IPR Modules IPR… an imperative business tools especially in the context of international trade practices, norms, treaties, agreements, etc. Introduction to Basic IPR Tools…. Driven by case studies derived from the global fashion industry Searching for IPR Information Significance of Documentation, Formal Contracts, Structuring of Negotiations, Pitfalls to avoid and essentials to take care of. Institutionalising the IPR Process.

Ipr, Intellectual Property Rights

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