As a Patent Analyst & Patent Attorney, I have attended the Global IP Convention that was held at Hyderabad. It was a good opportunity to meet clients and other industry professionals from worldwide.
Three day convention had more than 50 sessions from experts. Me having a habit of taking notes, I thought to share the extract keywords. Hence, pasting it here as bullets. You have any doubts to specific keyword, you may write to Lpo@pgnwissen.com
Global IP Convention Extracts of sessions
Theme:
Leveraging and Optimization of the IP Assets
Mr. Pravin Anand,
Creating an Asset, Leverage , Optimize
Statutory Law,Contract Law, Regulatory Law
Jurisprudence by an Inch
Recent Trends in Intellectual Property
Time Revolution
Court of Civil Procedure amended
2005 – IP Laws
2010 SC IP Litigation is 4 months – Evidence in Affidavit.
Remedies Resolution
Criminal Justice system in Civil
117 Trademark
Few in Patents
Technical Issue to Merits
10000 reported decisions
Territorial
Peculiar
Joinder – Mis Joinder
Less Technical,
Merits
Judges
Contempt
Moot Curt Order
They don’t like Suppression
Shortcut, Short order
Merk- Glenmark
Use of Technologies
Video Conference
Specialization
– Delhi Court, IPAB Revocation of Patent), Bangalore Court(District Courts),Politics at Law, Subjective, Court fees, Law Commission, Finer order gets struck.
Dr. Vivekanandan
Patent pooling, Consortium, Singer (1856 – 1877) – Sewing Manufacturer Association,1908-1918 – Wright Brothers – Aircraft Manufacturers Association,
1997-2001 MPEG, 1997-2014 CD ROM RFID,
Medical – UnitAid
Joint Licensing, Dumping, non-essential patents,Price fixing,Unreasonable Royalty,Grant back, Regulated fight
Mr.Narendara Sabharwal
– Licensing
– Sale
– Optimize value from IP
– Commercialization
– IP as a security and collateral
– Incentive
-Global Index from 6th position 2011 to 66th position in 2013
– Supply (Government), Network,Venture Capital, Incubators)
– 8000 Incubators
Mr.Mustafa Safiyuddin, Legasis Partners
Pre -1991 Government discouraged foreign brands
– Economy imperialisation
– Disadvantage of Indian Brands
– Hybrid Markets
– Mumbai High Court
– No Violation
-Assignment with dual ownership
– Assignment of Industrial Registration of Foreign Marks
R.K.Dewan
– Negative right
– Asset is missed(infringed)
– Strong as possible
– Different Strategy for every Country
Specialization claims according to Indian Standards
– Nirma register series of whole trademarks
– Diligence Section
– Audit
– Licensing opportunity
– What other Competitors doing around you
– Revocation for IP
– Cancellation of IP
– Litigation
Section 8
Novartis
Roche vs Cipla
Pfizer, removed, reinstated
Enercon
NRDC
Department of Information Technology
D.P.Vaidya
Goals, Threats, Strategy
- – Enforceability
- – Attacks of Invalidation
- – Length and Breath of Invention
- – Strategy Stated or Practiced
- Defensive or Offensive
- Exclusive or Monetization
- Important market
- Lower cost
Quality of Drafting
“You live with what you draft and die with the draft”
Invalidity, Infringement, Novelty, Inventive step
PHOSITA Vs P.SITA,
PHASAKITA(Lower standards for enablement)
Section 3
PHOSITA(US)
P-SITA (Personal skill in the art)
-Ambiguous claims or Claims without support
-Willful non-complaint to Section 8
Non-Compliance to Section 39- Secrecy provision
Section 6
Non–Compliance
(Inventor – Owner)
– Disclaimer, Correction, Explanation
– Changes in the claims should be as filed claims, original claims
– Any amendment to the as filed claims
– Amendment can be made at any stage, before or after the grant
– Amendment subject to clean hand doctrine
– Interpretation as formal
– What drives
– Baseline Draft, based on Target
– Research the subject
– Feel the subject matter
– Drafting Approach( 3-4 years learning required)
– Claims
(Broad scope to prior art)
(Different scopes)
(Cover value chain)
– Dependent Claims
– Embodiments Provide
– Describe noun of the claim
– Enable each verb of the claims
– Provide mere details
Dr.Ekkehard Heinze LL.M
U-Turns by the EPO
Greater safety in Patents
1) Multiple indépendant Claims (EPO)
– More value for PCT in Europe
– EPO Search schedule
– Non Searchable Subject matter
– Search report/Opinion and Substantive examination
– Timely restraints Divisional
– Pay additional search fee, Complete search, Divisional Billing
– Focus on just part of your claims
– Relevance of prior art
– Lack of unity
– Post hearing can happen
– Admitting device and method claims
Single Invention- Multiple Claims
– Method Claims co-exit with device claims
– But typically plural device
– PCT filed with EPO
– Pay for Argue intentional Phase
– Pay PO for additional searches within due term for all EP
– EPO Search
– Different
– Beginning only
– Argue Convincingly (Preferred) or be prepared for divisional
– EESR- 1st Substantive action
– Provide arguments
– Proceedings n writing (Actual response)
– Amendments after intention for grant
Divisional
-“Total reset” for search problems
– No way to extend the original
– High cost burden
– Time limits disappear
– Additional searches for PCT
– Claim structure
– Multiple Independent Claim
– Avoid length and complex explanation separated
– Wording Generalize
– Money for Additional Search
- Jonathan Morrall, Killburn and Strode
-Article 52
- ⁃ An inventions involve a inventive step
- – No discoveries, scientific theories, and mathematical methods
- -Closest prior art
- – Claim and closest Prior art
- – Technical effect
- – Technical Problem vs Claimed Inventions
- – Technicality
- 1986 ( T208/84)
- 1998(T1173/97)
- 2000 T931/95
- 2002 T641/00
- 2004 248/04
- – Multi file Dependencies can be used.
- Aerotel Vs Telco Holding
- EWCA – 45% signpost
- Ravi Bola
- – K & S Partners, Biotechnologist
- – Myriad vs AMP
- – Genetics
- – BRCAI Under Section USC 101
- – Monsanto
- – Mahyco case vs Bio-Deversity Law
- – Conserve
- – Sustainable Use,
- – Equitable sharing of benefits
- – IPO
- – Section 40
- – Bio Diversity Law
- Section 5
- Section 7
- Opposition outside India
- Novartis
- Section 3(d) Mere discovery of new form of a known substance without any enhanced efficacy is not patentable
- Shyam S Policetti, CPA Global Solutions
- US Prosecution and Policy
- Carp-et Bombing Vs Cherry Picking
- NPE problem
- Cycle and Gorging
- Post Grant Option
- Pre-Grant Option
- Post Grant
- Post Grant review
- Inter Parties Review
- Re-Examination
- Expensive 9000 to 18000 USD
- Higher Standard 35 USC 122
- $180
- 37 CFR1.56
- 35USC 257
- Fees Large 4400, Small 2,200 to 1100 Micro
- Howard B Miller
- – US Supreme Court
- – 9th year to review
- – Myraid
- – Patents eligibility
- 101 Composition of matter
- NAture isolation of DNA in nature
- cDNA was Patentable
- ASLU
- Dominant player
- 4 new grants
- Bryan Vogel
- RKMS
- US Circuit & District Circuit
- Decisions & Trends in Paragraph
- Reverse Payment
- – Safe Harbor
- Pleading Requirement
– FTC Vs Actavis
eBay Vs Merc Exchange LL.C
-Irreparable Injury
– Inadequate Monetary Relief
– Balance of hardships lean towards
– injunction
– further public interest
– International Trade Commission ITC
-Domestic Industry
-Demonstrate Infringement
ALJ blunted Samsung
CLAIMS 75, 76, 82, 348 PATENT
337(D)(I)(F)
PUBLIC INTEREST
INCLUDING MY EVIDENCE THE SEP HOLDER IS TRYING TO ENGAGE IN A HOLD UP OR THAT THE IMPLEMENTER IS ATTEMPTING ENGAGE IN A HOLD OUT.
Patent Issues
Anti Trust Issue
Technical Issues
Contract Issues
5 USC 271(e) (1)
Pleading requirement
Fed R Cir P.8
S C 2007
Ashcroft vs Iqbal S.C. 2009
Novartis vs Wockhardt DNJ 271(e)(2)
Cumberland vs Innopharma D.Del
Sunovion V Teva Fed Cir
BMS V Teva
Dr Anthony Proctor (Potter Clarkson)
– EPO Patent & Trademark Attorney
– Central Court for Litigation
– The Unified Patent
– Unitary Patent
– 2016/2017 Realistic Start date for new system
– EP, GB, FR, IT, DE
– R71(3) IFC Communication
Ranga Sourirajan
-Recent Agency decisions
-US, ITC, PTO, FTC
– File a complaint products that are being imported
-Supreme metalics
-Apple Vs Samsung
-Samsung vs Fractis
-Pre merger notifications, classification, we are in the line of new invention in type
Dr. Saiful Khan
-EPO and UKITPO
-Drafting Tips
-Office Action Responses
-125th Year
Computer Implemented Inventions
– Inventive Step
– Excluded Subject matter
– Legislation case law
– UK & EPC are the same
– Not patentable
– Novelty, Non-Obviousness(Industrial, Applicability)
– Board of Appeal in EPO
– Recent Changes in Practice
– 1986- Viacom Vs Digital Image
– Calculations in Image processing.
– Technical Process
– 1987, Koch & Stezel ( X-Ray Apparates)
-2004 Hitachi
-online dutch auction system
-2009 Nintendo
-Random number generation is technical
-2008 Symbian
– Halliburton – Drill bit design
– Traffic fulfillment
2006 Aerotel vs Telco
Construe
Contribution
DLL Patentable
– A technical effect outside the computer
– Architecture of
– Operating in new way
– Think Technical
– Hardware Difference
– Technical Operational Difference.
– Reliability, Securing one Drawing, Commercial Interest
Modeling,Simulation.
IP Innovation, IP Acquiring
Patent Information in Emerging Markets
Jurgen Dressel
Access to Medicine
Affordability
Political issues
Secondary Innovations
BRIC- (Brazil, Russia, India, China)
Research > Develop > Regularize) 3 years
Filing to Expiry – 20 years
1 Billion Dollars.
Compound (Genus) first medical use
Compound (Species)
Solid forms, solvates, Poly
Formulation, Rlease, Profile
Manufacturing, Processing, Intermedication
Additional Indication
Patient- Sub- Populations
Biomarkets
Combination
Improved formulation(Neoral)
Over Burden at Patent Office
Patent Expiry
Little case law
Barzil
Damage Specialized Appeal Court
Fast DEcisions
Independent Claims
Vode- Nov- REview
Good :-
Court Descretion
PIS Granted
Bad:
Section 8
Sec 3(d) Enhanced Therapeutic Efficacy requirement for Pharmaceuticals, working requirement, Compulsory License, Non-Emerging situation
China
– Ex Parte PIS granted
Bad:
No Post filed
Burden of Proof
Low Capital Statutory
Gary Speier, Schwegman- Lundberg, Voessner
Value Discovery
Patent Steps
Ready to answer those questions
Technical
Legal Status
Who, What, When, Where and How Much?
Claim Scopes, Analytics, Value, Portfolio
Pending days by Examiner
Kalpana Reddy
PPH
Patent Prosecution Highway
US Korea, Japan, China, EPO (IP5)
William H Manning
Without Trial or Appeal
Experts 40%
The art of Precision > Art of Persuasion > Art of Quantification
Juries
10th Grade
Practical Decision possible
Make Decisions based on 30% of the information
Intergraph Vs DELL, HP & Others
Pioneering
Rare, Innovative, Leaps, Transistor, Laser
Fundamental
Embedded and Adopted
Incremental
Distinct enough prior Art 99.9%
Simplicity, with Questions
Patent 5091846
Quality
Mediation vs Counsel
Hide and Seek no.
Take Now and Pay Later
1000 USD/Hour
Defendant Damage Expert
Laser Dynamics Vs Quanta
Apple vs Motorola
Put them into negotiation
Matthew L Woods
SEP, FRFM, ITC, the Phone wars
– What in What as
– Injunction relief
– Smart Phone Wars
– Whats Next
Consortium Info
Fair, Reasonable, and Non-Discriminating.
Renew
Time Limit
Country – Region – PCT – Counsel
Sec 39
Convention applicant 135
Commercial availability
Translation
Work hard
Dr. Agarwal
Building business
Patent does not create Value
What needs you are meeting
Proprietary Patents to Protect
Innovation and Overall Business Plan
Building Business
Culture that create value.
ASEAN
Marks & Clerk
Dependent
Independent
Multiple Repeated
Narrow
Wide
Roche Vs Cipla
Patent Laws
Substative Law
Procedure Law
Just beginning to recognize the importance of IP
Knowledge Engineering
Eligibility
Competitive Law
Small Companies play globally to extract the full potential
Strong IP Plan
Strong Innovation
Finnegen
New Drug
Method using drug to treat deceases
Process for Manufacturing drug
Equipment used to Manufacture drug
Dennise Defranco
Section 101
Abstract Ideas
Natural Phenomena
Laws of nature
2010 Blsk
2012- Prometheus
2013 Myriad
CLS Bank
J Hallen
Server/Backend
Method, Medium, System
Functional claims
Method, Computer Readable
System
Section 112 (g)
Means-Function-Claims
Re-Donaldson[Fed 1974]
Functional Element
Lack in Ennoblement
Surviving post grant challenges
Expert Challenges
Respond quickly
US Counsel
Early Review
Litigation
Joanna Uchanska
Inventive Concepts
Standardized/Objective/Precise/Clear
Terms may be different from those used by their disclosures, specifications or claims
A Scientific Amendment
Invention
Disaggregation
Disclosures
Definitiveness
Enablement
Independence
Non-Equivalence
Novelty
Article 25/ Article 54
-Minimal number of Independent thoughts
To be Invested into creating the innovation
When Independence
Non-Equivalence of Inventive
Patent Eligibility
Matter Interpretation
FSTP Analysis
Semi Automatic
Innovation Concept
Exclusions 3 & 4
Well Definedness(1-4)
Novelty/Non-Obliviousness(5-7)
Patent Eligibility (8-10)
1) Elementary Inventive Concepts
2) Completeness of Invention
3) Clarity about the means
4) Enablement should be possible for persons skilled in the art to carry out invention
5) Sufficiency of Disclosure
Lawfully – Definitively -Enabling
Step 10 and Rule 13
Complete Disclosure of Specification
(Lovotogas)
Sec 10(4)
The limits of Claims clearly and distinct
Novelty Check on all
-With prior Art, Published Anywhere
Prime date of filing
Limitation
Independent
Non-Equivalent
Novelty and non-obiviousness(Nano) Test 7
Biswanath Prasad Radhey Shyam Vs Hundustan Metal
Nano test formerly called as FSTP test
Creativity and Semantic
Patent Eligible Subject matter Sec3 IPA
Frivolous Invention
Argubale Assets
User Interface Entities
(Knowledge Represented)
Human Interactions
Legal Concept
Legal Concern
Legal Justiification
Legal Argument facts
Semantic
Computational; Independant
Platform Independent model
Platform Specific Model
Claimed Invention
Inventive Concept
Patent is described by Inventive concepts
Lawfull disclosure
Inventive Concept
Dr. Ayel B Berger,
Supplementary Protection Certificate
How can SPC be obtained?
The product is protected by a basic patent in force
CJEU
Glaxosmithkline
Liechtenstein
South Africa Patents
Vonseidels.com
ARIPO
OAPT
National Law
Lack of Definitive case Law regarding
OAPI
ERIC Robinson, Patent Counsel
Qualcomm
Consistency
Little Predictability
US Clearly allows patents on software
Indian Patent System is yet to define clear Guidelines but Software patents
Note: Notes were taken from Audio presentations, I shall not be responsible for spelling mistakes are order the presenter of bullet points.
