Module: Developing Your Own IP System (Week 7)

Introduction

 Introduction to a simple IPM Audit Model.

 The model helps in:

1. Creating an IP system where none exists.

2. Streamlining existing IP processes for better efficiency.

3. Analyzing and improving an existing IPM system.

 Can be implemented in any sector, academic/research institutes, or industries.

 Helps in identifying potential IP, a major challenge in IP management.

Key Questions Addressed by the IPM Model

1. How can organizations develop their own IPM system?

2. How can organizations assess their own IPM system?

3. How can organizations manage IPM efficiently for wealth creation?

Structure of the IPM Model

 5 Stages and 15 Major IPM Processes

 Labeled as A, B, C, D & E:

1. Pre-IP Stage (5 Processes)

2. IP Stage (4 Processes)

3. Post-IP Stage (3 Processes)

4. IP Acquisition (2 Processes)

5. IP Enforcement (1 Process)

Development of the IPM Model

 Based on studies of 3 Indian organizations & 3 foreign MNCs.

 Organizations were selected based on:

o Top IP filing organizations

o Thomson Innovation Award-winning organizations

 o Strong IP portfolios (from the Electrical Engineering sector)

 Research Process:

o 130+ IPM processes identified → Condensed into 32.

o 32 processes converted into 11 codes.

o Expanded into 15 codes, then 5 super codes.

o Final Model: 15 codes & 5 super codes.

11 Core Codes of IPM

1. IP Policy & Contracts

2. IP Security System

3. Idea Generation

4. Idea Selection

5. IP Administrative Protocols

6. IP Assessment

7. IP Inventory

8. IP Maintenance

9. IP Commercialization

10. IP Acquisition

11. IP Enforcement

 Idea Generation further split into:

o Idea Generation Driver

o Idea Generation Process

 IP Inventory categorized into:

1. Commercialized IP

2. Non-Commercialized IP

3. Acquired IP

4. Idea Inventory (Potential IP)

5 Stages of the IPM Model

1. Pre-IP Stage (Value Creation)

 Purpose: Identifying potential IP within an organization.

 Key Processes:

1. Technology Strategy

2. Innovation Strategy

3. IP Law-Related Human Resource Availability

4. IPM Tools Accessibility

5. IP Policy & Contracts

 Importance:

o Developing data confidentiality culture.

o Involves the entire organization, not just R&D.

o Example: Idea Inventory creation using suggestion boxes.

2. IP Protection Stage

 Purpose: Selecting & protecting valuable IP.

 Key Processes:

1. Idea Selection & Screening (Filtering ideas based on feasibility, market

demand, etc.).

2. Project Development Planning.

3. IP Protection Strategy.

4. IP Inventory Creation (Non-commercialized IP).

 Challenges:

o High costs involved in IP protection.

o Strategic decision-making required to select the most valuable IPs.

o Selection criteria: Feasibility, market demand, business potential,

technology lifecycle.

3. Post-IP Stage (Value Extraction)

 Purpose: Commercializing IP and deciding maintenance strategies.

  Key Processes:

1. IP Maintenance & Renewal (Paying license/maintenance fees).

2. IP Commercialization & Monetization.

3. Strategic IP Utilization (e.g., cross-licensing, bundling).

 Challenges:

o Only 2-5% of patents get commercialized.

o Organizations must decide which IPs to maintain and which to drop.

o Some IPs have future strategic value even if not immediately

commercialized.

4. IP Acquisition

 Purpose: Strengthening the IP portfolio through acquisitions.

 Key Processes:

1. IP Due Diligence & Portfolio Evaluation.

2. Acquisition & Integration of IP Inventory.

 Importance:

o Big companies acquire smaller firms to eliminate competition.

o IP acquisition is a strategic tool for business growth.

5. IP Enforcement

 Purpose: Protecting IP rights through legal mechanisms.

 Key Processes:

o IP Enforcement & Legal Protection (Using external agencies if needed).

 Challenges:

o Organizations must actively defend their IP to maximize benefits.

o Enforcement is a costly but necessary activity.

Practical Applications & Implementation Strategies

For Academic Institutes

 1. First 6 months – Draft an IP Policy.

2. Next 6 months – Idea Generation activities (e.g., idea submission programs).

3. Year 2 – Select promising ideas & develop them into projects.

4. Year 3 – File patents & commercialize IP.

For MSMEs & Startups

 Develop performance metrics based on the IPM model.

 Self-assess progress yearly (using a 1-5 rating scale).

 Aim for a fully functional IPM system within 3 years.

Conclusion

 The IPM model is a structured approach to developing, managing, and enforcing

IP.

 Applicable to any organization (academic, industry, or research).

 Strategic decision-making is key at each stage.

 Self-assessment and continuous improvement are essential for success.

When to Publish and When to Patent (Confidentiality)

Key Takeaways

 Previously, the focus was on "publish or perish," but now it’s "patent first, then
publish."

 Both publications and patents are essential, but maintaining confidentiality ensures
novelty.

 First to file rule: Patents should be filed before publishing to protect intellectual
property.

Five Key Scenarios for Patent Filing

1. Research Scholars

 Academic institutes emphasize publications, but patents should be prioritized.

 Research presentations in closed groups are generally confidential; ensure policies are
in place.

 Before submitting research for publication, file a provisional patent to secure

rights.

 While submitting a thesis, request confidentiality from the library until the patent is
filed.

 During defense, ensure confidentiality agreements are signed.

2. Scientists in R&D

 Continuously monitor research for potential intellectual property (IP).

 Identify novel inventions early and file patents before public disclosure.

3. Engineering/Science Students

 If a project is innovative, consult a professor and consider patent filing through the
college.

 Before presenting projects in competitions, file a provisional patent to avoid

losing rights.

4. MSME (Micro, Small & Medium Enterprises)

 MSMEs focus on product marketing rather than research publications.

 To protect innovation, file a provisional patent before launching a product or

publicizing it.
5. Doctors & Engineers

 Surgical methods cannot be patented, but instruments and diagnostic tools can.

 Identify technological gaps and file patents for novel solutions with expert help.

Final Advice

 Always consider patenting before publishing to safeguard intellectual property.

 Confidentiality is key in research, product development, and innovation.

Statutory Exceptions (Anticipation) - Notes

1. Understanding Anticipation and Absolute Novelty

 First-to-file rule is followed, but there are exceptions to anticipation.

 India follows absolute novelty, meaning an invention must not be published or used
anywhere in the world before filing.

 Key legal provisions:

o Section 2(l) – Defines "new invention" as one not anticipated by publication

or public use.

o Section 13 – Provides procedures for searching anticipation.

2. Search for Anticipation (Section 13)

 Patent examiner investigates whether an invention has been:

1. Published before the filing date of the patent application.

2. Claimed in any earlier patent application with a priority date before the
applicant’s filing.

 18-month unpublished phase – Patent applications are published after 18 months, so

any patent filed in that period remains unknown and may still anticipate a later-filed
patent.

3. Powers of the Controller (Section 18)

 Controller can reject an application if it is anticipated by:

o Prior publication.

o A prior-filed patent application with an earlier priority date.

 Exceptions where the applicant can amend and proceed:

o If they prove their priority date is earlier than the published document.

o If they modify the specification to satisfy the Controller.

 Objection process (Rules 28 & 29):

o Applicant receives specific objections and has 2 months to amend.

o If contested, a hearing is scheduled (usually via video conferencing).

4. Statutory Exceptions to Anticipation (Sections 29-34)

Certain cases are not considered anticipation even if the invention was previously
disclosed:

1. Anticipation by Previous Publication (Sec 29)

o If someone published the invention without the inventor's consent, it will

not be considered anticipation.

2. Anticipation by Government Communication (Sec 30)

o If disclosed to the government for investigation, it will not affect novelty.

3. Anticipation by Public Display (Sec 31)

o If displayed at an exhibition, learned society, or conference, it will not be

considered prior art, provided a patent is filed within 12 months.

4. Anticipation by Public Working (Sec 32)

o If an invention was tested in public for a reasonable trial period, it will not
be considered prior art if filed within 12 months.

5. Anticipation by Use and Publication After Provisional Specification (Sec 33)

o If disclosed after filing a provisional patent, it will not be considered

anticipation.

Conclusion

 Absolute novelty is mandatory under Indian patent law.

 Patent examiners thoroughly check for anticipation before granting a patent.

 Certain disclosures (exhibitions, government communication, trials) are

exceptions if a patent is filed within 12 months.
Procedure for Patent Filing - Forms and Fees (Week 7, Module 4)

1. Patent Fees (Rule 7, Patent Rules 2003)

 Fees structure is mentioned in the First Schedule of the Patent Act 1970.

 Patent fees vary based on applicant category:

o Natural Person / Startup

o Small Entity

o Others (Corporations, Large Entities, etc.)

Basic Filing Extra Pages Fee (Beyond

Category Extra Claims Fee (Beyond 10)
Fee 30)

₹1750 /
₹180 / ₹440 / ₹880 per extra
India ₹4400 / ₹350 / ₹880 / ₹1750 per extra claim
page
₹8800

$300 / $150 / $400 / $200 / $100 per extra $100 / $50 / $25 per extra claim
USA
$75 50 pages (beyond 100) (beyond 20)

€15 per extra sheet (beyond €235 per claim (for 15-50 claims) and
EU €210
35) €585 for subsequent claims

2. Patent Forms (Rule 8, Patent Rules 2003)

 Forms required for patent applications are listed in the Second Schedule of the
Patent Act 1970.

 2014 Notification Update: Introduced "Small Entity" category and Form 28 for
Small Entity applicants.

Key Forms and Their Purpose

Form
Title Section & Rule Fee (₹)
No.

Form 1 Application for grant of patent Section 7, 54 & 135; Rule 20(1) ₹1750

Form 2 Provisional / Complete specification Section 10; Rule 13 Free

Statement and undertaking under

Form 3 Section 8; Rule 12 Free
Section 8
Form
Title Section & Rule Fee (₹)
No.

Section 53(2) & 142(4); Rule ₹530

Form 4 Request for extension of time
13(6), 80(1A), 130 (M)

Form 5 Declaration as to Inventorship Section 10(6); Rule 13(6) Free

Claim/request regarding change in Section 20(1), 20(4), 20(5); Rules

Form 6 ₹880
applicant for patent 34(1), 35(1), 36(1)

Form 7 Notice of opposition Section 25(2); Rule 55A ₹2600

Request/claim regarding mention of Section 28(2), 28(3), 28(7); Rule

Form 8 ₹880
inventor 66, 67, 68

Form 9 Request for early publication Section 11A(2); Rule 24A ₹2750

Additional Forms and Procedures

 Change in Address – Requires Form 1.

 Forms related to publication and examination – Form 9 (Publication), Form 18

(Examination request).

Conclusion

 Patent filing requires proper forms and fees as per the Patent Act 1970.

 New categories (Small Entity) and Form 28 were introduced in 2014.

 Filing fees, extra claims, and extra pages have varying costs based on applicant
category and country.
Module 5, Week 7 – Interaction with IP Attorney: Initial Drafting, FER Reply, and
Hearing

1. Selecting a Competent Patent Expert

 A patent expert (patent agent/attorney) determines patentability, helps in filing and

obtaining protection, and facilitates commercialization.

 Patent process: Generation → Protection → Commercialization

 Resources to find a patent expert:

o Friends in the IP or legal field

o Previous patent filers

o Internet browsing

o Indian Patent Office website (for registered patent agents and facilitators)

2. Choosing the Right Patent Expert

 Domain-Specific Expertise

o Patent experts specialize in different fields (e.g., Pharma, Biotech, Computer

Science, etc.).

o Choose an expert whose specialization matches the invention.

 Educational & Professional Background

o Science/Engineering background required for Patent Agent Examination

o Legal and IP experience preferred

o Expertise in patent drafting, prosecution, litigation, commercialization

 Sequence of Events in Patent Filing

o Conducting a patentability search

o Drafting and filing patent application

o Securing international protection (if needed)

o Licensing and commercialization

3. Financial & Logistical Considerations

 Fee Structure:

o Attorney’s fees (hourly vs. fixed rate)

 o Disbursements and additional costs

 Time Estimates & Involvement of Inventor

o Expected time for each stage of patent filing

o Level of inventor’s participation

 Associate Network

o Essential for foreign filings

o Collaboration with non-Indian patent attorneys

4. Legal Aspects of Patent Filing

 Inventorship & Assignee

o Who qualifies as an inventor?

o Inventor’s role in various stages

o Applicant types: Natural person, group of individuals, or a legal entity

o Organizational policy determines assignee

 Technical Details of the Invention

o Essential technical features vs. prior art

o Type of invention (product/process)

o Prototype availability and further development

o Any prior disclosures (publications, presentations, patents)

 Patent Search Report

o Identifying prior art and conducting supplementary searches

5. Commercialization & Market Analysis

 Patent should align with market strategy

 Identifying target countries, customers, and competitors

 Licensing vs. self-marketing

 Risk assessment for product/process copying

6. Special Considerations for Biotechnology & Chemistry Patents

 Biotechnology:
 o Use of proprietary constructs/organisms

o Gene sequences and BLAST analysis

o Depositing in microorganism banks

 Chemistry:

o Novel synthesis methods

o Chemical structure and substance classification

o Substituents affecting technical effects

7. Types of Specifications & Filing Process

 Provisional Specification

o Brief description of invention (No claims)

 Complete Specification (Form 2)

o Sections: Title, Preamble, Technical Field, Background, Objectives,

Drawings, Detailed Description, Claims, Abstract

 Claims Section

o Defines patent protection scope

o Structured as: Introductory phrase → Body → Linking phrase

o Broad claims first, followed by dependent claims

8. First Examination Report (FER) & Hearings

 Response to FER

o Address objections promptly

 Hearing Process

o Indian Patent Office may schedule a hearing to resolve pending objections

o Request for hearing must be made at least 10 days before the deadline

 Final Steps

o Once objections are resolved, the patent is granted