International International

Property Rights Conference Report

8th & 9th January, 2009

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INTERNATIONAL INTELLECTUAL PROPERTY

RIGHTS CONFERENCE

(INDO-US Knowledge Enterprise)

The International Intellectual Property Rights Conference, hosted by ITAG Business Solutions Ltd. (a

business solutions and IP service provider), and co-organized by the Indian Chamber of Commerce

(ICC), in collaboration with knowledge partners Sughrue Mion PLLC, USA, and the Institute of

International Trade, Kolkata, was held on 8th and 9th of January 2008.

The conference aimed at enhancing awareness about the pivotal role of Intellectual Property Rights

(IPRs) in today’s Globalized knowledge economy. Deliberation on various segments of Intellectual

Property Management formed the core elements of discussion by eminent international speakers.

The conference focused on steel, automobiles, construction engineering, mining engineering,

electronics, information technology, and similar fields of industries. The theme of the conference –

Empowering Business Entities through IPR – rightly envisaged the vast domains covered in the

discussions.

The various issues discussed in the conference hovered around the following key areas –

IPR Policy and IPR Strategy

Patentability Assessment on Steel, Construction Engineering, Automobiles, Mining,

Electronics, Computer Software and Business Methods

IP Commercialization

Issues involved in Technology Transfer, Merger & Acquisitions

IP Due Diligence

IP Risk Management

IP Insurance

IP Litigation & Dispute Resolution

IP Prosecution under different Jurisdictions: A comparative study of USPTO, EPO, JPO &

Indian Patent Office (IPO)

IP Valuation

IP Securitization and IP Taxation, and

IP Prosecution

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PROGRAM OVERVIEW

Inaugural Speakers and the Issues dealt with:

Mr. Sanjay Budhia, President, Indian Chamber of Commerce

Mr. Budhia initiated the discussion with a brief overview of the roles and responsibilities

of the ICC. He emphasized on the importance of IPR enforcement for the economic

growth of India and as a source of foreign investment, thereby increasing employment

opportunities in the country. He further explained the growing awareness about IPR and

its role in future business opportunities, expressing an optimistic view towards the

success of the conference in dealing with the issues at hand.

Mr. V. Ravi, Controller General, Patent, Trademark and Design, Govt. of India

He gave a brief overview of the global scenario with respect to IPR, stressing upon the

importance of IPR and its inevitability for the growth and development of any country. He

took it a step further by adding the importance of commercializing IP and noted that it is

one of the key factors of economic success of a country. A detailed discussion on the

evolution of IPRs in India followed thereafter.

Ms. Beth Payne, Honorable Consul General, US Consulate

The importance of IPR protection and its significance in accelerating growth and

development was the main emphasis. Ms. Payne pointed out the fact that in a changing

global scenario, a weak IP protection is a potential barrier to international trade and

development. Improving IP protection is in the best interest of both USA and India as

Indian companies in US and vice versa would benefit from IPRs.

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Mr. M.K. Agarwal, Managing Director, GATI Ltd.

The significance of an organization having access to new knowledge and being able to

translate it into viable commercial opportunities was discussed. Citing classic examples

of Basmati rice and Turmeric, he explained how a nation progresses through IPR

generation.

Dr. D. R. Agarwal, Director, ITAG Business Solutions Ltd

The value of human resource as the most important economic resource of a country

was emphasized. He drew attention to the fact that 64% of the global economy is

contributed by human resource and, in such a scenario, the immense resource that can

be exploited from the human mind, cannot be negated. He stressed upon the 3 basic

ingredients for an effective IP system - legal framework, administration, and

enforcement.

He continued further to explain certain key issues related to Intellectual Property Asset

Management. IP mining, i.e. identification of intellectual property as an asset, IP

Policy and Strategy, IP Protection, crime, and enforcement, and accounting and

valuation of IP were discussed. He pointed out that, despite the importance of IP in

modern businesses, accounting for intangibles remains a challenge for both preparers

and users alike. He explained the Indian Accounting Standard 26 which regulates the

accounting for intangibles and explained amortization of IP. The various approaches

adopted for IP valuation were also discussed and the importance of IP Portfolio

management by an organization was assessed.

Commercializing IP, IP Broking, and IP Auctions were discussed to help

organizations identify ways to leverage their IP Assets for economic gains. IP

Technology Transfer, Financing, And Securitization were also discussed as ways to

improve international trade and monetize intellectual property. The growing concern

about R&D companies falling prey to patent sharks was considered. Firms with hidden

intellectual property often surface, threatening to sue the victimized company, when

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their rights are inadvertently infringed. The high risks associated with the company’s IP

being exposed to patent trollers was brought to the forefront.

Finally, IP Audit, a systematic review of IP assets owned or developed, was discussed

in details. The importance of an IP register and IP due diligence was emphasized. IP

analysis and landscaping as opportunities for international trade and development was

also looked into. How organizations are based on a comprehensive analysis of patents

for planning future research and growth opportunities is called landscaping.

The main purpose of the discussion was to enlighten the participants to identify gaps

and clusters in technology and gain a competitive insight through the process of IP

Asset Management and determine the commercial viability of patents through

exhaustive analyses and research.

Mr. Alan J Kasper, President Elect, American Intellectual Property Law Association, USA

He expressed his concern for the absence of a proper IPR strategy in India. He

stressed upon three key factors for developing a global IP strategy -recognition of IP as

an important asset, importance of IP with respect to the development and marketing of a

new product and a proper plan.

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TECHNICAL SESSIONS (I to VI)

TECHNICAL SESSION I

Subject:

IPR Policy and IP Strategy

Speaker:

Mr. Chid Iyer, Partner, Sughrue Mion PLLC, USA

Chairman of the session:

Mr. V. Ravi, Controller General, Patents, Trademarks and Designs, Govt. of India

Abstract:

Mr. Iyer focused on the fact that IPR policy and strategy determines the strength of any organization to

stay competitive in business and to provide for protection of intellectual properties by minimizing the

risk of IP litigations. He emphasized that for any organization, an IPR policy is as important and critical

for success as the business policy and the HR policy. He also added that a policy on IPR encourages

research and development activities in the country. An IPR policy plays a key role in developing the IP

strategy of a business. An IP strategy is developed by conducting IP landscaping in the field of

technology where the company intends to commence its business. IP strategy is also significant in

effective IP commercialization as it helps to identify those patented technologies which cannot be used

within the organization due to lack of funds or other reasons, and can thus be licensed and be more

economically useful.

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TECHNICAL SESSION II

Subject:

Patentability Assessment on Steel, Construction Engineering, Automobiles, Mining, Electronics,

Computer Software, and Business Methods

Speaker:

Mr. John F. Rabena, Partner, Sughrue Mion PLLC, USA

Chairman of the session:

Mr. Alan J Kasper, Senior Partner, Sughrue Mion PLLC, USA

Abstract:

Patentability Assessment is the search that is conducted to evaluate the patentability of an invention

based on the statutory requirements from a patent office. These statutory requirements from a patent

office include: non-obviousness, novelty, and usefulness. In addition to evaluating patentability, the

assessment helps in defining and drafting patent for an invention. He reemphasized that a patent right

is an important legal document as it gives exclusive rights of usage to the holder of the right for a

period of up to 20 years. He also discussed about standardizing the products according to the

documentation requirements of the process at it happens, in order to keep an infallible record of the

process and conducting timely quality checks and reviews. Mr. Rabena spoke about the significance

of patentability assessment in each of the industrial arenas mentioned in the subject. The bottom line

of the discussion was that organizations should seek to achieve the most appropriate protection for the

least upfront investment while allowing as long a marketing period as possible to find a licensee or

other partner to move it to a practical application and hopefully pick up the past and/or ongoing patent

costs.

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TECHNICAL SESSION III

Subject:

IP Commercialization, Issues involved in Technology Transfer, Mergers and Acquisitions, IP Due

Diligence

Speaker:

Mr. Alan J. Kasper, Senior Partner, Sughrue Mion PLLC, USA

Chairman of the session:

Mr. Mainak (Miku) Mehta, Partner, Sughrue Mion PLLC, USA

Abstract:

Commercializing IP is the process one undertakes to move its innovation from “just another brilliant

idea for a product or service” to the market place. Several aspects of IP commercialization, including

IP leveraging and IP financing were discussed. Modern approaches like IP auctioning through online

established auctioneers and through IP exchanges with the help of technology market and technology

trading exchange were a matter of discourse. The use of IP has also expanded to its use as collateral

by pledging patents, trademark or copyrights similar to tangible assets such as real estate, equipment,

and machinery.

Defining technology transfer (TT), as transfer from one entity to other, he mentioned that existing

knowledge, facilities, or capabilities developed under research &development (R&D) departments are

utilized to fulfill public and private needs, which can be transferred, in three ways through licensing,

franchising and merger & acquisitions. Successful licensing requires very secure IP from issued and

pending patents to trade-marks, copyrights and proprietary info. However, to be in a position to

franchise the business, product or service, one must be successful and should be able to prove that

there are profits and also growth in the future.

Due diligence is prerequisite to the valuation process, regardless of the methodology used which is

again a requisite for Merger & Acquisition.

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TECHNICAL SESSION IV

Subject:

IP Risk Management, IP Litigation & Dispute Resolution

Speaker:

Mr. Michael R. Dzwonczyk, Partner, Sughrue Mion PLLC, USA

Chairman of the session:

Professor Dhrubajyoti Chattopadhyay, Pro-Vice Chancellor, University of Calcutta

Abstract:

A company or an entity may have the same threat for intangibles as they have for tangible assets,

from its competitor for infringing upon the rights to the technologies of other. This risk may result in

litigations and disputes which may cost much higher than the cost of insurance. So to avoid such

litigations based on IP risks, every intellectual property in an entity should be insured. IP insurance can

also be taken to cover legal costs incurred for taking enforcement action and can also act as a

deterrent to potential infringers. Sometimes, IP insurance is also a prerequisite for venture capital

financing agencies which often ask for insurance of the concerned IP assets. Business secrets are

exposed to the risk of IP theft and may cause huge business losses to a company. Unlike

infringement, theft is a criminal offence.

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TECHNICAL SESSION V

Subject:

IP Prosecution under different jurisdictions: A Comparative study of USPTO, EPO, JPO & Indian

Patent Office (IPO)

Speaker:

Mr. Mainak (Miku) Mehta, Partner, Sughrue Mion PLLC, USA

Chairman of the session:

Mr Chid S Iyre, Partner, Sughrue Mion PLLC, USA

Abstract:

Mr. Mehta discussed about patentable subject matter - novelties, inventive steps, disclosure, claims

and foreign filing licensing steps, under Intellectual Property rules of different countries like Europe,

Japan, US and India. He went on to explain IP Prosecution and discussed how the protection of

Intellectual property and preventing competitors from using the know-how and techniques is the main

aim of IP prosecution. Protection can be done in various forms like Patent, Trademark, Copyright and

Trade secret. Different countries have different Intellectual Property Right's procedure, so country wise

decision to pursue patent protection should be done based on strategies and international treaties.

One should have proper prosecution strategies to avoid the repetitions of prosecution history

disclaimer, to comply with duty of disclosure and also to maximize cost efficiency and minimize

pending applications. Officials should be responded to aptly and timely in case of any office action

which might have taken place. For instance, if India is considered then there is no limit on the number

of office actions, but there is a limit of twelve months to place the application in condition for

acceptance.

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TECHNICAL SESSION VI

Chairperson of the session:

Professor Dr (Mrs.) Somasri Mukhopadhyay, Alpha Institute of Business Management (ICFAI), Kolkata

A.

Subject: IP Valuation

Speaker: Mr Chid S Iyre, Partner, Sughrue Mion PLLC, USA

Abstract:

IP Valuation is important for IP pricing and for raising money through any other route. Valuation is

required in almost all business areas like merger & acquisition, technology transfer, joint venture,

license fees and others.

Various specific methods of valuation of IP like twenty-five percent rule, Industry Standard Rating &

Ranking, Monte Carlo Analysis, and others were discussed. General methods of IP valuation like cost,

market and income methods were also a part of the discourse.

B.

Subject: IP Taxation

Speaker: Dr D R Agarwal, Director, ITAG Business Solutions Ltd.

Abstract:

Dealing effectively with the taxation of IP in multi-national businesses involves many different tax

disciplines. It is essential to consider the overall structure of IP in a multinational business so as to

identify all the situations where taxation issues may arise like transfer of any IPR, income from royalty,

transfer of IPR as capital asset and transfer pricing. Referring to the Indian Income Tax Act, he

stressed on international transaction relating to IP and discussed sections 92A to 92 F covering

transfer pricing in details.

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Subject: IP Enforcement

Speaker: Mr Goutam Banerjee, Advocate, Patent and Trademark

Attorney, Khaitan and Co, Kolkata

Abstract:

Intellectual Property Rights offences now affect everything that is manufactured and has a commercial

value, touching all sectors from horticulture to the auto industry to pharmaceuticals. The offenders

keep pace with the latest technology and with trends in the global market.

Mr. Gautam Banerjee aimed attention at IP Enforcement, and enlightened that enforcement can be

done at three levels - judiciary, police and customs at border. Civic remedies are available in case of

patent act violation, but in case of copyright laws and trademark laws violations, it is treated as

criminal actions.

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SOME CHOSEN MOMENTS FROM THE CONFERENCE

A Panoramic view of the conference

Dr. Agarwal (Director) in conversation

with Mr. Alan J Kasper (left) and Ms.

Beth Payne (right)

L to R: T.K.Ghosh, V Ravi (Patent

Office), Dr Agarwal, Sanjay Budhia

(ICC) and Ms Beth Payne (US)

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A cross section of the audience

Dr Agarwal giving a presentation of

Intellectual Property Taxation

Maimunah Baharuddin (Assistant

Secretary, Ministry of Science,

Malaysia) with Dr Agarwal

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Conference Speakers with

IITrade Team

OUTLOOK

The conference concluded on the note that intellectual property laws will become homogeneous and

uniform in a gradual evolution. The menace of counterfeiting and piracy of copyrights, trademarks, and

patented inventions will reduce with constant improvements in the IP system through various

awareness programs in the years to come. However, a greater challenge is still awaiting the

consensus on the issues on extension of geographical indications beyond wines and spirits,

recognition of traditional knowledge, and bio-diversity as part of the TRIPs agreement of the WTO.

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SHARING THE ENLIGHTENMENT

…this is what the participants had to say:

"I think that such seminars should be organized in all Colleges; Institutions & Universities where considerable R&D work is carried out .This would boost Patent filing in our country."

"Make this programme a regular feature to reach to the general public so value can be unfolded."

"Very well organized and contents are good exposure on IPR."

"Lectures related to purely scientific issues could have been more. European patenting issue was absent."

"Such Conferences should be held at regular intervals so awareness among more and more people will be there."

"Overall impressive"

"Very informative and educative. It has created awareness about IPR amongst corporate very effectively."

"Congratulate you all for the successful completion of the event."

"The Conference was 'historic' in the sense that perhaps this was the first of its kind IPR Conference in Kolkata. We look forward to further such events in Kolkata, for the better protection of IPR and the interests of the consumers, along with the leading businesspersons, IP practitioners, members of the law enforcing agencies, and the media people. Wish you all the success in future such events."

"Kudos!! to all of you, who worked relentlessly, day in and out, in transforming the mega event, a grand success. No doubt, the conference, the first of its kind in Kolkata is quite enriching in its content and presentation."

ACKNOWLEDGEMENTS AND THANKS TO ALL THE SPEAKERS AND PARTICIPANTS