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MIP India IP and Innovation Forum

March 7, 2013 - Le Meridien, New Delhi

For the 2nd year running the India IP and Innovation Forum brought together a high level and varied Indian delegation and expert speakers from India, Europe and the US to create a dynamic forum in which they could discuss the issues most urgent and pertinent to the furthering of innovation in India today.

In-house counsel, working in India for both local and international corporations, were offered expertise and practical guidance on IP matters most important to Indian business.

This proved a vibrant forum disseminating vital information and encouraging expansive thought-sharing for a market unambiguous in its desire to expand whether locally or globally, and to monetize strategically – but also to balance such matters against public interest and key policy concerns affecting the greater population within India’s own emerging economy.

Key TAKEAWAYS from the Forum are:

Keynote address: ‘The life of P.I. (Public Interest)’ Justice Prabha Sridevan, Head of IP Appellate Board

· Patent rights were created in the interest of the national economy. However is the only ‘social responsibility of business’ to make money?

· Must we pit IP versus justice and human rights?

· Will ‘justice’ discourage investment from foreign companies?

· Public interest is best served by full and frank disclosure

· No nation can afford to ignore India. Laws change. Interesting times are ahead and public interest remains of upmost importance

Patent prosecution tips

· Basic patentability requirements in Europe: Novelty; Obviousness (inventive step); Section 3 issues; Divisional Applications; Amendment on national phase entry

· European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application

· The following shall not be regarded as inventions: discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information

· EPO Boards of Appeal have deliberately avoided making a definition of what constitutes a potentially patentable invention. However an invention must have ‘technical character’

Pharmaceutical patents: Case studies and future implications

· Shukadev Khuraijam delivered an overview of the significant cases: Novartis’ Glivec; Roche Vs CIPLA – the Tarceva case; Compulsory licence – the Nexavar case

· Dr Harry Thangaraj presented key findings of his research with the Access to Pharmaceuticals project:

· Last few decades focused on improving access to essential medicines e.g. anti-retroviral and anti-malarial drugs

· Growing recognition that non-communicable diseases (NCD) place intolerable burdens on health systems of developing countries (DC). Dual burden of CD and NCD including cancer

· The IP issues: Learning from existing models: e.g. India’s s.3(d) – limitations on ‘evergreening’. Drug price regulation and control

· Negotiation and voluntary licensing to be vigorously pursued. Companies to be encouraged to segment markets with preferential pricing

· Compulsory licensing to be used as a last resort. However where necessary, DCs should make use of TRIPs flexibilities

Indentifying challenges in the IP industry and determining how they can be addressed

· Grey market goods: The fundamental tension between the first sale doctrine and the right of a business to manage its own product sales. Are IP laws the right tools to control goods? Should balancing consumer choice and freedom of other businesses to operate override this? The trend is clearly against national/local exhaustion

· Strengthening domestic IP: Why? Driver for the knowledge economy; Greater value to an economy in creating than using IP; Domestic pressure to improve systems will be far more effective than MNC pressures

· Strengthening domestic IP: How? Education of domestic companies regarding the value not simply cost of IP; Cash grants for patents; Clustering technology companies; Tax incentives e.g. on royalties. View brands as assets

· Working with IP authorities: Engagement is an overlooked IP strategy; Customer input and listening to stakeholders is key; Alignment with a national strategy for IP is important too

· R&D engagement between domestic and foreign companies: Major companies should have a plan to do this in key markets

Trademarks in Germany

· The seven essentials of filing German and Community trademark applications: Apply for trademarks in time; Search for earlier rights prior to trademark application; Evaluate for absolute grounds of refusal; Application of combined word/figurative trademark, even though also only word is protectable; Trademark application in colour, though colour of no importance; Trademark application for a word: use of a different lettering style instead of the official one; The list of goods and services is too narrow, possible future business areas are disregarded

· Possible claims in cases of infringement: Cease and desist; Information; Damages; Destruction; Call back

· Interactive discussion on a series of key visual examples: ambiguities in trademark disputes: What was the ruling?

The India patents act and software patentability

· Comparison of software patents in US, Europe and India: US criteria are broader and state that software-related inventions are patentable if they produce “useful, concrete and tangible” results. In Europe software patentability depends more on technicality of the invention ie software inventions are patentable if they are ‘sufficiently technical in nature’.

· The practice in India is analogous with Europe and does not focus on software programme but rather on the basis that software inventions should be sufficiently technical in nature. Moreover, it focuses more on technical application within industry.

· Smartphone wars have had the following effect on the industry at large: High costs for invention activity; Huge resources and costs towards law suits; An increase in acquisitions.

· Smartphone wars have some positive effects on business: Increased patent filings and increased licensing deals. But the problem is that they divert attention from other key issues for in-house legal teams

· Lessons learnt: Investments are essential in patenting whether or not the cost is big/small; Research focus should match competition trends; Generate inventions with significant worth.

Why file in the US

· Developments in the US affect IP management strategies even if a company does not sell there. An example is this is the recent AOL-Microsoft patent deal worth over $1 billion.

· Under the America Invents Act, after March 16, the US will switch to a first to file system. All patents from that point on will also be subject to a broader universe of prior art, so there is a rush to patents in before March 16.

· IP filing strategies should be based on the market and competition. A company should consider filing not just in its home markets, but also where its competitors does business, manufacturing, etc.

· Different markets require different strategies. IT for example, moves very quickly and decisions tend to be market based. Also, the technology has a fairly short lifespan because it changes rapidly. Biotech on the other hand takes much longer to get products to market. Also, regulatory issues there further slow things down.

Developing IP strategy and monetising your portfolio

· Open innovation can mean different things; it can mean open within an organisation and breaking down silos within a company (cross pollination); it can mean working with a partner; it can also mean posing a problem to a public of customers, user groups, or enthusiasts.

· Open innovation is often seen as antithetical to protecting trade secrets but it does not have to be like this if done carefully. Also, open innovation does not mean trading ideas or free/outsourced innovation.

· The traditional closed innovation model of developing a product and then marketing has worked in the past but it is getting increasingly more difficult. One reason companies are using open innovation is that costs of development are getting higher and higher. Open innovation allows you to access outside talent and ideas and sharing costs.

· Open innovation brings many advantages, but companies need to do due diligence about their partners and find ones to establish long term relationships with. Agreements about ownership of any developed IP need to be made early.

· Beyond open innovation, IP management of any sort can and should be treated like any other business centre. IP is ultimately about generating value, and the IP management office can be evaluated as a profit/loss centre using metrics like any other business.

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