Patent Strategy for Indian Companies in the environment of MNC threats

Recently we carried out two interesting studies (purely technical studies)

1. Patent Infringement study
2. Patent Invalidation study

Scenario: - An MNC has a patent that expired in 2010 in multiple countries but it was not filed in India. Around half-life period the MNC filed another patent which was a slight extension of the base patent - but this time through PCT route they filed in India as well. The new patent was granted - they cited the base patent as prior art and created some mumbo-jumbo the way people who draft these applications know so that the new application looks like an invention over prior art.

The patent was granted in India as well.

No one opposed/ no one knew in India as they "interested parties" in India are relatively small firms (will come under SMEs).

The MNC sent the letter to one of the big SME's saying their product infringes the patent - hence they should stop production and sales.

The Indian company really was not aware of the patent and what actions to take.


Solution: After months of struggle, they found us. We suggested that

(a) Let us look at the extent of infringement
(b) let us look at the validity of the patent

In a week of study, we were able to prove that on technical grounds

Patent is not valid (purely on Technical grounds)

(a) Insufficient disclosure of how to exercise the invention
(b) Prior art - the old expired patent was the main patent - and the extension was some sort of small extension
(c) Prior use - there was a product existing in the market since 1980s which clearly shows that invention described in the patent is not Novel.

Key lessons

(a) Maintain a continuous patent watch in your industry
(b) As you see a patent for which you have a prior art or prior use - immediately raise a pre-grant opposition in Indian Patent office (this is much less costly)
(c) If someone threatens with a patent - please do the following

1. verify the extent of infringement - many times infringement may be very small or negligible
2. Check the validity of patent - given the pace of patent apps and lack of sufficient availability of manpower in patent offices - many patents are granted with very low level of assessment - 30-40% of patents will be invalid on various grounds

(d) If there is an infringement and patent is valid

1. get into carrying out a Technology Alternative Studies (TAS) on the patent. To know more about TAS - please look at the LINK on Crafitti http://www.crafitti.com/index.php/2008/11/15/technological-alternatives-study-tas-on-a-patent-a-unique-service-from-crafitti-consulting/

2. Get into a discussion/negotiation with the MNC


Please understand the extent of threat that your company, your field is facing due to patent system becoming more pronounced and India becoming a Big Globally lucrative market.

Our defence is in our hands.

Innovation Process, Patent Strategy - Organizational Framework

{In December 2002 I wrote a report on Patent strategy and Innovation process}

The contents are below. If you need the whole report for free send me and email at navneetbhushan@gmail.com

INNOVATION PROCESS AND PATENT STRATEGY – AN ORGANIZATIONAL FRAMEWORK

EXECUTIVE SUMMARY

1. INTRODUCTION

2. INTELLECTUAL CAPITAL OF AN ORGANIZATION

3. PATENTS, COPYRIGHTS AND INTELLECTUAL CAPITAL

4. SOFTWARE AND PATENTS

5. HOW OTHERS DO IT

6. THE SPOT APPROACH FOR GENERATING IP

7. PATENT STRATEGY

8. GENERATING PATENTS AND INNOVATION PROCESS

9. ORGANIZATION FOR CREATING PATENTS

10. CAN TECHNOLOGY HELP IN CREATING PATENTS

11. ACTION PLAN

REFERENCES

EXECUTIVE SUMMARY

The shift to Knowledge based economy requires a comprehensive, well-planned and well-established structure and process within the enterprise to mange the Intellectual Capital (IC) of the enterprise. Patents are an important form of Intellectual Capital of the enterprise.

With the grant of Software Patents and Business Method Patents by US PTO, the issue of software patents has assumed greater importance. Although there are controversies regarding whether software per se should be allowed to be patented, however, this can not be ignored by companies existing in a competitive world. The competitive advantage that can be obtained and protected can become the major factor in long-term sustainability of business.

Carrying out a survey of various processes and structures existing in various companies, it is evident that a Central IP and Patent Generation Cell should be created in the enterprise. The responsibility of this cell includes

• Articulating and aligning Patent Strategy with Business Strategy

• Articulating and rolling out the innovation process

• Creating a Search Wing for existing patents in major technology areas

• Providing assistance and resources to flesh out initial ideas

• Creating collaboration channels with academic institutes and universities

• Conducting Idea Generation Workshops and Brain Storming Sessions for creating innovation

• Evaluating and deploying technological solutions and systems to create org wide innovation generating infrastructure

• Conducting Workshops for innovation hunters in the Practice Units

The results expected from this initiative are summarized as

• Creation of IP in the form of Business Method Patents and Software Patents

• Protection of these Patents

• Branding The Enterprise as an IP Leader in the Consultancy & Services Industry

• Leveraging The Enterprise Patents to generate revenues for the company.

The immediate Action Plan proposed is

• Detailed Patent Strategy Document to be prepared

• Organization steps towards creating a Patent Cell and creating Innovation Hunters

• Articulation of process of innovation

• Our Innovation Potential in Technology Areas where we operate

• Search for existing Patents in those areas

• Choice and fleshing out the initial innovation

• IP generating Technology Adoption strategy and framework to be developed

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