Identifying IP Assets · business strategy Aligning IP Management and Strategy with Business perspective is the key Gain maximum mileage permitted in law . ... Intellectual Property

3/6/2012

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© COPYRIGHT 2012, LAKSHMI KUMARAN & SRIDHARAN

Identifying and Leveraging IP Assets

V. Lakshmikumaran, Managing Partner

Identifying IP Assets

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6 © COPYRIGHT 2012, LAKSHMI KUMARAN & SRIDHARAN 6

Portfolio Building

Cannot obtain license revenue w/o identifying

the assets involved

Valuation Issues - Incorrect Identification

results in incorrect valuation

Significant tax and FEMA issues

Can be deal-breaker during M&A’s.

Importance of Identifying an IP Asset


Anything intangible (Ideas / Concepts

developed by oneself / employees) is IP

Commercially successful product developed

by oneself / employees gives entitlement to

IP

Perceptions - IP Asset

But nothing can be farther away from the truth

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Need to recognize when and how an IP (as

recognized in law) can exist or be created

Most common forms that require active

registrations

patents (inventions)

registered trademarks (logos, distinctive names

for products etc.)

industrial designs (shape of tooth paste tube,

bottles etc.)

Identifying an IP Asset


Some forms of IP do not require active

registration

copyright (including technical manuals, software)

Some forms of IP require no registration, but

some form of pro-active efforts

Trade-secrets (undisclosed customer information,

know-how)

Trade-names (continuous prior use)

Identifying an IP Asset …Contd.

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Difficulties arise due to permeable /

overlapping boundaries for different IPs (E.g.)


Patentable Inventions

Tech./ know-how – potential trade

secrets


Another (e.g.)


Patentable Software Implemented

Invention

Improvements in software related technology

- (default) copyright protection

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Another (e.g.) –


Purely design choice (solely for ‘appeal to the eye’)

Purely functional design (potentially patentable)

Functional + ‘appeal to the eye’)

Differing scope of protection for different IPs

Crucial to choose appropriate form(s) of IP



Multiple IPs can cover same product

Decision cannot be divorced from overall

business strategy

Aligning IP Management and Strategy with

Business perspective is the key

Gain maximum mileage permitted in law

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Leveraging IP Assets

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Exploiting IP Assets

IP Value per se – affects value of the company

and market perception of the company

Nortel:

• Sold patent portfolio for $ 4.8 Bn

• Realized Rs. 30L per patent

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Exploiting IP Assets

IP Assets can be exploited in multiple ways

Always a question of overall business strategy


Broadly,

• Enforce Exclusivity

Offensive

• Build portfolio for counter-suing

• Obtain IP on improvements – leverage against other players

Defensive (Offset threats)

• Licensing Revenues

• Opportunities of Cross-Licenses

Collaborative

Exploiting IP Assets …Contd.

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Classic Enforcement – damages from

infringement suit / settlement

Polaroid v. Kodak (Instant Photography) (1970s-90s)

• Outside court settlement

• $925 Mn.

• Original claim - $ 12 bn. (exceeded Kodak’s net worth)

Nokia v. Apple

• Outside court settlement

• Apple agrees to pay $11.8 per iPhone to Nokia

• So far more than 100 Mn. iPhones sold



Enforcing Exclusivity (Offensive)

May get counter-sued in an ‘IP crowded’ market –

always remember that obtaining IP may not

necessarily grant right to practice;

Long drawn and expensive (Polaroid case started

in 1976 and was finally settled in 1991)

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Collaborative strategy – truly treats IP as a financial asset

“Virtuous Cycle” (partly depicted)

Obtain IP (Own / In-license)

Develop Derivative

IP

Greater range of products

Out-License IP



Licensing Revenue – not to be underestimated

Texas Instruments:

• Licensing Revenue more than $1Bn

• Drives Standards

IBM:

• Licensing Revenue about $2Bn

• Visionary

Ericsson:

• Licensing Revenue more than $0.5 Bn

• Drives standards in ICT

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Licensing

IP Licensing simpliciter

Product / technology licensing (portfolios)

Licensing essential / standards patents


Floor is Open for Other Speakers

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New Delhi • Mumbai • Bengaluru • Chennai • Hyderabad • Ahmedabad • Pune

About Us


Lakshmi Kumaran & Sridharan (L&S) is an Indian law firm specializing in the areas

of International Trade, Taxation, Intellectual Property and Corporate law.

Founded by V. Lakshmi Kumaran and V. Sridharan in 1985, the firm has seven offices

across India in New Delhi, Mumbai, Chennai, Bengaluru, Hyderabad, Pune and

Ahmedabad.

The firm is well-known for its high ethical standards, quality work and transparency in all business

dealings. It supports its clients by providing litigation, dispute resolution and advisory services and

compliance reviews across each of its divisions of Tax, International Trade, Intellectual Property and

Corporate.

For more information, visit us at http://www.lslaw.in

Lakshmi Kumaran & Sridharan

http://www.lslaw.in

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Contact Details

New Delhi B-6/10, Safdarjung Enclave

New Delhi - 110 029

Phone - +91-11-4129 9811

E-mail - [email protected]

Bangalore 505-508, 5th Floor,

Brigade Plaza (North)

71/1, Subedar Chetram Road,

Anand Rao Circle

Bangalore - 560 009

Phone - +91-80-4171 7777


Mumbai 401-404, Kakad Chamber

132, Dr. Annie Besant Road

Worli, Mumbai - 400 018

Phone - +91-22-2491 4382


Hyderabad Hastigiri, 5-9-163, Chapel Road

Opp. Methodist Church, Nampally

Hyderabad - 500 001

Phone - +91-11-4129 9811


Ahmedabad B-334, SAKAR-VIII,

Nehru Bridge Corner, Ashram Road,

Ahmedabad - 380 009001

Phone - +91-79-4001 4500


Chennai 2, Wallace Garden, 2nd Street

Chennai - 600 006

Phone - +91-44-4396 1600


Pune Ebony Meeting Room

1st Floor, Apartment Section

Hyatt Regency

Weikfield IT Park, Nagar Road

Pune - 411 014, Maharashtra

Phone - +91-20-6641 1234



Thank you For more information visit http://www.lslaw.in

http://www.lslaw.in

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Identifying IP Assets · business strategy Aligning IP Management and Strategy with Business perspective is the key Gain maximum mileage permitted in law . ... Intellectual Property