Intellectual Property Rights
PATENTS
TRADEMARKS
COPYRIGHTS
DESIGNS
GEOGRAPHICAL INDICATIONS
PLANT VARIETY PROTECTION
TRADE SECRET
Strengthen your idea/innovation by putting them through an assessment
- Patentability Search
- Trademark Search
- Freedom to Operate Search
- Invalidation Search
- Patentability Opinion
- Freedom to Operate Opinion
- Invalidation Opinion
- Infringement Analysis
Why is it required?
- Essential before proceeding with protection/commercialization
- Helps in taking informed decision
- Enables entities to be confident about their product/process
- Supports working around the product/process if the assessment is unfavorable
- Substantially cuts down unnecessary/avoidable future cost
- Prepares you to take a right approach to proceed further
Good to have IP, but make it meaningful – They should be potent and commercially viable
- Seeking Foreign Filing license [FFL] where applicable
- Filing and Prosecuting IP Applications – Patents, Trademarks, Copyrights, Designs, Geographical indications, Plant variety protection
- Handling applications worldwide:
. Local filings – Provisional Application, Complete Application, Patent of Addition, Divisional Application
. Foreign Filings – PCT Application, Conventional Application, National Phase Patent Application, Madrid Filings
How can we protect better?
- Each case is different thus requiring tailored approach for drafting/filing the applications
- During prosecution, need to tackle objections keeping in mind the interest of the Applicant
- Proper approach to tackle objections if the applications are filed in more than one country – Global approach
- Exploring mechanisms to prosecute applications to make the process:
. Economical
. Non-compromise in the scope of claims;
. Effective - Connect with right attorneys across the globe
Smartness lies in maintaining your IP judiciously. Keep at it!
- Annuity/Renewals :
. Patents
. Trademarks
. Designs
. Geographical Indications - Recording of an assignment/transfer of ownership
- Filing Working Statements [Form 27] for patents
- Filing post-grant amendments – Patents
- Recording of Licensee – Patents
- Restoration of patents
How to manage after grant/registration?
- Discussion with client and periodic assessment of renewals/filing working statements
- Strategies to maintain the patents based on the business interest
- Effective approaches for restoring the patents
- Assess your IP periodically
- Assess your patents for filing working statement
- Record licensee’s name in a timely manner
- Maintain your IP that aligns with your business interest
- Take effective approaches for restoration
Rely on the strength of your IP and ensure to enforce your right
- Appeal
- Pre-grant Opposition
- Post-grant Opposition
- Revocation Proceedings
- Infringement Suit/Litigation
Diligence is a must, it helps identify IP in your work
- Investigation of research work [Past, Present and Future]
- Categorizing and bucketing IP and Non-IP work
- IP Filing, Trade secret, Publications, Docketing, Monitoring, Periodic assessment of the data
- IP Portfolio Management
Why and how it is done?
- Scout for all IP and Non-IP work
- Identify the IP’s filed, check their statuses, assess their strength and strategize future actions
- Bucket the IP’s at different levels and align them with business interests
- For Non-IP work, assess their strength and strategize IP filings. Wherever possible, explore the possibility of trade secrets and suitable measures to safeguard the same
- Use specific databases/tools to record the information, monitor deadlines, etc
- Regular assessment for monitoring each IP’s performance and develop robust strategy
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