MANAGEMENT of IPR
Prashant sunagar
MSRIT
Bangalore
NRDC, Bangalore
Management Perspective
MANAGEMENTS
VISION ON IPR
NRDC, Bangalore
MANAGING
IPR
AN
Managements Vision on IPR
Board
Level Decision
Budgeting
Development of Manpower Expertise
Business Perspective
Feel the need to Build-up Knowledge
Base
NRDC, Bangalore
Managing an IPR
Technology
transfer by licensing
(Do Business)
Look for infringements (policing)
Upgrading the development
Assigning rights to others
Resolve IPR ownership issues
NRDC, Bangalore
STRATEGY
BUSINESS
NRDC, Bangalore
IPR
IPR Strategy
The
bulk of Principles, Decisions and
Implementations that are Designed to
serve as to how the IP matters
pertaining to an Innovation are to be
handled with the entity, how they need
to be protected from Infringements
and how they can be best exploited
commercially.
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NRDC, Bangalore
Product Development Cycle
INTERNAL PROJECT
MANAGEMENT GROUP
POTENTIAL IPRs
MARKET SIZE
IDEA
COMPOSITION
FINANCIAL &
HUMAN
RESOURCE
REQUIREMENTS
NRDC, Bangalore
SERVICE
PROVISIONS
MANAGEMENT
PROVISIONS
Tools of IP Protection
Legal
Patent
Copyright
Trademark
Design Registration
Geographical
Indications
Layout Designs of
Integrated Circuits
Plant Varieties
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NRDC, Bangalore
Secrecy
Trade Secrets
(In-house
knowledge)
Family Secret
Which IP Protection
Tool?
No
SUPER HIT formula
Both useful (legal & secrecy), both
relevant
Depends on the IP and situation
Often
several tools are used
in combination
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NRDC, Bangalore
IPR Rights
Exclusive
rights to underlying IP
You can use it, sell it, dispose it
Right to stop others doing things with
IP
But cannot compel people to do
things with the IP
Option to enforce these rights
Where rights have been breached
can ask court to enforce
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NRDC, Bangalore
How do you make money from
IPR
Sell/Mortgage
Sell the underlying IP with rights
License
People pay you to use your IP
Need to carefully define the scope
of use
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NRDC, Bangalore
What should you protect?
Cant
protect every idea (nor should you)
Work out what can and cant be protected
Weigh up protectable ideas and their
value
Work out who will benefit from protection
Decide how much you have to spend
Be cautious!
Most patents never make money
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NRDC, Bangalore
Managing IPR in Organizations
Present Situation: Why ?
Mandate
for research (Overlapping/Redoing)
Role of managements in Research Limited
Co-ordination among divisions lacking
Knowledge of benefits from IPRs lacking
Limited funding for research
No clear IPR policy
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NRDC, Bangalore
Management of IP: Objectives
You
want to own all the IP and the rights
You want as few other people as possible to
have rights in the IP
WHO OWNS THE IP?
General Rule: A creator owns his/her IP
BIG exception #1: Law presumes that
employer of creator owns the IP
BIG problem #1: Joint ownership of IP
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NRDC, Bangalore
Employment and IP
Assume that everything you work on / invent
belongs to your employer
What about after-hours or hobbies?
In the course of your employment
You may / may not own depending on the contract
HOW TO AVOID THIS?
Read your employment contract thoroughly before
signing
Negotiate right to own the IP your create outside of
work / non-competitive with work
Use confession sheets
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NRDC, Bangalore
Joint Ownership of IP
Often two or more people or organizations will
work on same project
This can create joint ownership of IP
Separate ownership of distinct contributions (i.e.
improvements)
JO can cause big problems
Can cause commercial paralysis
Requires unanimous consent of all owners to do
anything (license, sell, develop, etc) with IP
Creates arguments about who owns what
Investors very reluctant to invest in projects with
joint IP
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NRDC, Bangalore
Claimants to your IP
Very
rare that one person contributes all the
IP for a product/processes
Often multiple people / organizations will
have claims or (worse) rights to your IP
Potential Claimants
Your employees
Consultants you have hired
Your organizations share holders / directors
The users of your IP i.e. customers
Third part IP providers
JV partners, etc
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NRDC, Bangalore
YOU HAVE TO BE VIGILANT
Need
to conduct regular searches for both
registered and non-registered IP rights
Patent databases
Internet
Directories of companies / organizations
Industrial magazines / journals
Failure to search can create a problem
Ignorance is no excuse
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NRDC, Bangalore
Licensing Your IP
Licensing more valuable option
Can you develop IP to necessary stage to license?
Can you identify, negotiate with and handle licensees?
Scope of the license What are you giving away
and what are you getting?
Exclusivity, duration, territory, product range & purpose,
enforcement rights, sub-licensing, assignment
Contractual rights & obligations
Can you revoke license if non-use
Can you monitor licensee activity?
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NRDC, Bangalore
Managing IPR in Organizations
New Situation: Results !
IPRs Jointly Developed by Scientists / Faculty
Intellectual Base of Organization Strengthened
(Leads to Attraction of Talent)
Recognition from Industry (for R&D as well as
Trained Manpower)
Motivation for all Employees to take-up Higher /
Advanced Education / Training
Motivation of Employees to Work on New and
unexplored Areas
Continued ..
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NRDC, Bangalore
Managing IPR in Organizations
New Situation: Results !
Income
Generated
Remuneration to Right Holders
Further Improvements or New Research
Less Dependency on External Finance
(e.g. Banks), Investors, etc
Self-sustenance
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NRDC, Bangalore
Knowledge is
Power
But !
ONLY IF
MANAGED WELL
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NRDC, Bangalore
Thank You
Questions Please
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NRDC, Bangalore
