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ICAI-SIRC-BANGALORE 6 July 2011 Overview of IPR- A CA's Perspective 1 An overview of IPR – CA’s perspective NARENDRA BHATTA HL 6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 1 6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 2 Protected Knowledge is Wealth, Protected Knowledge is Power.

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Page 1: NARENDRA BHATTA HL

ICAI-SIRC-BANGALORE 6 July 2011

Overview of IPR- A CA's Perspective 1

An overview of IPR – CA’s perspective

NARENDRA BHATTA HL

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 1

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 2

Protected Knowledge is Wealth, Protected Knowledge is Power.

Page 2: NARENDRA BHATTA HL

ICAI-SIRC-BANGALORE 6 July 2011

Overview of IPR- A CA's Perspective 2

WHAT IS THE RELEVANCE OF IPR TO A CHARTERED ACCOUNTANT ?

Each registered/unregistered IP has a different scope and

value:

Copyrights have a long but limited validity time, say

100yrs)

IP like Trademarks are perpetual

Patents and Designs have limited validity of 20 and

15 s

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 3

15yrs

Plant varieties too have a limited validity of

maximum of 15yrs

Geographical Indicators doesn’t have a time bar

WHAT IS THE RELEVANCE OF IPR TO A CHARTERED ACCOUNTANT ?

Each of these IP can be traded:

Sale of goods, Transfer of Know-how, Grant of

Licenses, setting up of Joint Ventures, mergers

and acquisitions, FDIs

Any Traded commodity should be valued to ensure a

proper and justified trade, hence it is of paramount

impo tance to nde stand the economics of IP

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 4

importance to understand the economics of IP

development & life cycles and its related technical aspects

including IP portfolio Management Matrix to do justice to

economic –financial accounting valuations.

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Overview of IPR- A CA's Perspective 3

The logical steps for achieving the

understanding and evaluation of IPR:understanding and evaluation of IPR:

IP AUDIT

&

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 5

IP VALUATION

In order to perform an IP Audit andsubsequently value the IP audited, there is aneed to understand the nuances of IPacquisition. Let us begin this journey:Contents:

What is Property?

History of IPR

Forms of IPR

Indian Scenario

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 6

Concerns of IP

IP Audit

IP Valuation

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Overview of IPR- A CA's Perspective 4

Property is an interest enforceable at law.

The Institution Of property predates even the‘St t ’ St t i t i t h th i

WHAT IS PROPERTY?

‘State’. States comes into existence when there is“harvestable surplus” of wealth.

The harvestable surplus of the society is taken awayby the State by its power to tax.

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 7

As a Quid Pro Quo for payment of taxes by thecitizen, the State undertakes the obligation ofensuring respect and observance of private propertyrights.

Millions of years ago, humans evolved from hunter gatherers to agriculturists.

This is the first attempt of humans to apply technology for producing his basic needs

TOOLS OF WEALTH CREATION

for producing his basic needs.

Hence land symbolized wealth, till the end of the 19th century.

Thereafter, ‘TRADE’ became an important wealth

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 8

Thereafter, TRADE became an important wealth creating tool.

Increased ‘TRADE’ made ‘manufacturing’ the best tool for wealth creation

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Overview of IPR- A CA's Perspective 5

Survey of Wealthy Indians

1950 -1970 :- Former KINGS, ZAMINDARS, LAND LORDS, TATAS,BIRLAS/Jamnalal Bajaj (all these j j (

people inherited their wealth).

1970-1990:- Dhirubhai Ambani……., Nusli Wadia, TVS, TTK, Dr.Reddy (Reddy Labs), Ranbaxy, Piramal

(this group focused on achieving global quality at Indian prices on basic technologies)….

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 9

1990-2000:- Mr.Azim Premji/Shiv Nadar, GururajDeshpande/ Mr.Narayana Murthy/Jagadish/Sameer

Bhatia/Ms.Kiran Mazumdar Shaw (the last group are all products of the technological revolution)

International History of IPR 1604:-

HISTORY OF IPR SYSTEM

yStatute of Monopolies,(U.K)-more anattempt to restrict the powers of theCrown to grant monopolies, than agenuine desire to protect Literary,Artistic Sculptural or Technological

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 10

Artistic, Sculptural or TechnologicalWorks.

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Overview of IPR- A CA's Perspective 6

1861- Berne Convention on the Protection of Copyrights

1882-Paris Convention on the Protection of Industrial

International History of IPR

Property.

BIRPI- A Private organization for the Protection of IP

1957-Birth of WIPO, which became Repository organization for these Treaties.

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 11

1994-WIPO became a specialized Agency of U.N

WTO –TRIPS Agreement

FORMS OF IPR

TrademarksPatents

IPR

Copyright

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 12

Designs

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Overview of IPR- A CA's Perspective 7

Example

Design

Trademark Patent

136th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA

INTELLECTUAL PROPERTY SYSTEM[INDUSTRIAL PROPERTY SYSTEM]

ALL THESE RIGHTS CONFER SOME KIND OF MONOPOLY HENCE THEY MUST NOT ONLY BE STRICTLY

CLASSICAL IPR: FIRST GENERATION IPR

MONOPOLY.HENCE THEY MUST NOT ONLY BE STRICTLY JUSTIFIED BUT ALSO STRICTLY CONSTRUED

• COMMON LAW RIGHTS

• REGISTRATION NOT COMPULSORY

• STATUTORY RIGHTS• REGISTRATION IS

MANDATORY• PATENTSCOMPULSORY

• COPYRIGHTS-enjoy inherent protection

• TRADEMARKS

• PATENTS• DESIGNS

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Overview of IPR- A CA's Perspective 8

COPYRIGHTS

This protects Literary & Artistic works, M i D S (b h

IPR- For Protecting Knowledge

Creation of knowledge-This is primarily

t t d b C i ht Movies,Dramas, Songs (both lyrics & the musical composition),Books, Films,Computer Software etc.

DURATION: Depends on the type E.g. Films: 50 years

protected by Copyright System.

Requirement are- (a) originality (b) reduction into a tangible form.

l dtype E.g. Films: 50 yearsBooks: lifetime of the author &

60 years thereafter.

• Registration is optional6th July 2011

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TTA15

Originality under copyright law means the work owes its origin to the author. It is different from novelty.

PATENTS

Application of created knowledge to produce useful results-This is primarily

d b S

All inventions that have commercial applications, except those that are

protected by Patent System

Requirements are Novelty, Utility, non-obviousness and statutory subject matter.

Utility means that the

excluded from patentability.

DURATION:20 years from the date of Application.

Utility means that the invention is capable of industrial application

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Registration is compulsory

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Overview of IPR- A CA's Perspective 9

Rationale Behind Patent Protection Disclosure theory:

This enables the inventor to Incentive theory:

Patents add fuel to the fire of This enables the inventor to disclose his invention to public ,instead of keeping it a trade secret.

After the expiry of the monopoly period any

Patents add fuel to the fire of genius-Abe Lincoln

Creation of technology is highly capital & risk intensive. Patent monopoly is a just reward.

Every invention improves monopoly period, any interested person can use the Specification for replicating the invention

Every invention improves quality of life. Patent provides a chance to convert an inventive concept into commercial success.

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TRADEMARKS DESIGNS

This is for marks that areapplied to goods in

To concepts that enhance the aesthetic value of the

IPR - For Protecting Goods

pp gtrade. It is intended toconvey to the purchaserthe origin of goods & anassurance that the goodsbearing the mark are ofthe same quality.

D ti I fi it

goods as opposed to functional features.

Duration: Two terms Duration: Infinite

Registration optional

10years and 5 years

Registration compulsory

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Overview of IPR- A CA's Perspective 11

What can be registered as a trademark?

• Slogans –

• Taglines –

• Sound – Airtel, Yahoo, ICICI, Intel, Harley Davidson

S ll b thi? f ?• Smell – agarbathi?, perfumes?

• Shape – cocacola bottle

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1. Geographical Indicator

Protection available for goods that have a specific geographical

origin and possesses qualities or reputation due to that place of

i i

New Generation IPR

origin.

This is an IPR held by a group of people and it cannot be freely

transferred for money.

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 28

There must be a specific link between the products and original

place of protection). Geographical indicator can be perpetual.

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Overview of IPR- A CA's Perspective 12

REGISTERED GI’s from North Karnataka

GI No GI Category

•20 Bidriware Handicraft

•71 Hadagali Jasmine Agriculture

•76 Ilkal Sarees Handicraft

•61 Navalgund Durries Handicraft

•62 Karnataka Bronze ware Handicraft

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 29

•80 Dharwad Pedha Foodstuff

•134 Sandur Lambani Embroidery Handicraft

•129 Byadagi Chilli Agriculture

2. Plant Varieties registration:A new variety of an existing species, if it discloses a new characteristic, which is beneficial, the same can be protected under the Act

New generation IPR:- (contd..)

under the Act.

For it to qualify for protection it must have(a)novelty(b)distinctiveness(c)uniformity and (d)stability

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 30

(d)stability

Indian Law also protects the rights of the farmer to use the seeds of the new variety without any restriction from the registered owner. The period of protection depends on the type of the plant.

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Overview of IPR- A CA's Perspective 13

New generation IPR

3. Semi conductor chips:-These are the back bone of all electronic products. Registration of the chip is compulsory for availing legal

i protection.

The criteria for protection is(a) Original (b) Inherently distinctive (c) Not commercially exploited either in India or abroad.

The period of protection is 10 years from the date of registration or commercial exploitation whichever is earlier.

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INDIAN LEGAL REGIME OF IPR Indian Patents and Designs Act 1911(now repealed)

Copyright Act 1957 [No. 14 of 1957]

Trade & Merchandise marks Act,1957(now repealed and l d b d k [ f ])

, ( preplaced by Trademarks Act, 1999 [No.47 of 1999])

Patents Act,1970 [No. 39 of 1970]

The Geographical Indications of Goods (Registration and Protection) Act, 1999

Designs Act 2000 [No 16 of 2000]

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 32

Designs Act 2000 [No. 16 of 2000]

The Semiconductor Integrated Circuits Layout-design Act, 2000 [No. 37 Of 2000]

The Protection of Plant Varieties of Farmers Right Act, 2001 [No. 53 of 2001]

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Overview of IPR- A CA's Perspective 14

Comprehensive Approach to the Protection of Intellectual Property:-

Suppose you invent a pen-* Register a Patent for the technology* Design for the appearance * Trade Mark for its brand & * Copyright for the accompanying literature

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 33

Then you will be in a position to comprehensively cover your invention by IP rights.

CONCERNS OF IP:This analysis clarifies the relevance of intellectualProperties to wide range of business and society, withthe following groups having primary interest in IP:•Promoters and shareholders—IP investments are associated with excessive cost ofcapital. Excessive cost of capital hinders investment andgrowth. Promoters and shareholders are interested inmechanisms aimed at reducing the excess cost ofcapital.*Capital market regulators. —Research documents the existence differences ininformation about organizations between corporate

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 34

information about organizations between corporateinsiders and outsiders in IP intensive companies. Thatmay lead to consequences such as systematic losses tothe less informed persons and thin volume of trade,which the regulators want to check.

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CONCERNS OF IP:

*Accounting standard boards. —The lack of understanding of IP and its relevance toaccounting and need to compulsorily account for IP inthe annual audits and reports. Formation of standardsfor IP auditing and valuation

*Policymakers. —In key areas, such as the assessment of fiscal policy(e.g., R&D tax incentives) supporting innovation,optimal protection of IP .A thorough examination of theattributes of IP and specific harmful consequences

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 35

attributes of IP and specific harmful consequencesrelated to intellectual Properties should be concernedabout.

IP AUDIT

“What keeps me awake at night are the Intangibles....its the

intangibles that are the hardest thing for a competitor to imitate.

You can get airplanes, you can get ticket counter space, you can get

tugs, you can get baggage conveyors. But the spirit of Southwest is

the most difficult thing to emulate”.....

Herb Kelleher, founder of Southwest Airlines, quoted in” THE

INVISIBLE ADVANTAGE” by Jonathan Low & Pam Cohen

© HL NARENDRA BHATTA

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Overview of IPR- A CA's Perspective 16

Why Conduct an IP Audit?

To create an IP policy that accurately reflects institutional

assets and needs

To highlight existing IP practices and make adjustments

accordingly

For the sheer joy of inventory: what do you have? Where

did it come from?

To trigger and facilitate creative projects using foundTo trigger and facilitate creative projects using found

“assets”

To monitor compliance (for your use of third party IP and

vice versa)

When to Conduct an IP Audit?

Prior to any business dealing or new project

With introduction of new rights or change in law/statutes.

Need for development/reassessment of IP policies.

As result of law suit.

Prior to ValuationPrior to Valuation.

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Overview of IPR- A CA's Perspective 17

➲ Misconception

➲ Needed by

companies

• Reality

• Virtually every business relies on a

broad array of intellectual property

assets in today's information

developingcomplex

industrial patents, or

those that rely

heavily on

economy

• The assets are no longer stored in the

research and development

department.heavily on

sophisticated trade

secrets.

• Every area of the corporation is

involved in the use of intellectual

property, including human resources,

IT, marketing, sales, and research.6th July 2011 39ICAI-

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➲ Misconception

IP audits are valuation

tools, designed

exclusively to

• Reality

• While the use of the IP audit is

critical when the balance sheet

fails to tell the complete storyy

recalculate the dollar

amounts assigned (or

not assigned) to

intangible assets

fails to tell the complete story,

this is only one of many times

the IP audit should be used

• audits are designed to identifyintangible assets those opportunities to exploit

assets being under-utilized

6th July 2011 40ICAI-

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Overview of IPR- A CA's Perspective 18

➲ Misconception

IP audits are valuation

tools, designed

exclusively to

• Reality

• to identify those areas where

funds are being spent

unnecessarilyy

recalculate the dollar

amounts assigned (or

not assigned) to

intangible assets

unnecessarily

• to correct situations where

legal or financial liability may

be developing as a result ofintangible assets misuse of the intellectual

property owned by third

parties.6th July 2011 41

ICAI-BANGALORE/INTELLOCOPIA/BHAT

TA

Key steps to an audit:

1. Identification

2. Ownership

3. Legal protection

4. Liability assesment

5. Recording

6. Valuation of Intellectual property

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Overview of IPR- A CA's Perspective 19

1. Identification:Involves identifying, describing and defining the intangible assets:

1. Assets created by the company/institution/organization

All registered intellectual property

Any potential intellectual property

Staff know-how, NDAs, CDAs

Data subject to privacy or security agreements, whether by contract or bylegal requirement

2. Assets acquired without an express license

Use of competitor's trademarks in advertising

Incidental photocopying, e-mail

Employee data and client data

3. Assets used by the company under a contract or license Software, equipment licences

2 Ownership:It is essential to establish who or what entity owns the intellectual property

and to what extent.

3 Legal Protection:

Developing and recording strategies on how to best protect any

unregistered intellectual property

What sort of intellectual property applications should be pursued to

maintain a competitive advantage for the business.

Provide guidance on protecting in-house know how and to protect trade

secrets.

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Overview of IPR- A CA's Perspective 20

4. Liability Assessment:Consideration of any liabilities or risks associated with the intellectual

property identified, including the likes of:

Are there ownership risks and liabilities?

What are the documentation/record keeping standards like?

What risks are involved with trade secrets/know how?

Key personnel liabilities?

Potential or existing litigation/opposition issues.Potential or existing litigation/opposition issues.

Are there any obligations or encumbrances on the intellectual property?

6th July 2011 45ICAI- BANGALORE/INTELLOCOPIA/BHATTA

5. Recording:Personnel surveys and direct observation

Comprehensive, written analysis: Identified assets catalogued;

reassessment of assets and level of protection

Create and implement a response plan.

6. Valuation of Intellectual Property:It is important to put a dollar figure on a piece of IP.

The relative value of a piece of IP gained from an understanding of where

the IP fits in with the IP owned by competitors.y p

Review of freedom to operate(FTO) issues given competitors positions.

Rationalisation of the portfolio that are not aligned with the current and/or

future commercial direction of the business

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Deliverables resulting from an audit:

A Qualitative Intellectual Property Benchmarking Report

Identify shortcomings

Highlight acceptable or current industry standard

intellectual property practices

Provide recommendations

all intended to help senior-level executives shape a

corporate-wide Intellectual Property Best Practices

program.

A CASE STUDY

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•Jet Airways is the country's second-largest international airline after Air India and the largest domestic airline, along with Jetlite.

• Incorporated as an air taxi operator on 1 April 1992.

• Started Indian commercial airline operations on 5 May 1993 with a fleet of 4 Boeing 737-300 aircraft.

•In January 1994, a change in the law enabled Jet Airways to apply for scheduled airline status which was granted on 4

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 49

apply for scheduled airline status, which was granted on 4 January 1995.

•Began international operations to Sri Lanka in March 2004. •August 2008 it was fully integrated as Jet Airways.

A listed company, 80% of its stock is controlled by Naresh Goyal through his ownership of Jet’s parent company, Tailwinds.

Naresh Goyal already owned Jetair (Private) Limited, set up Jet Airways as a full-service scheduled

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 50

full-service scheduled airline to compete against state-owned Indian Airlines

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The brand “Jet Airways” was that the trademark was notregistered in name of the company rather it was registered inname of the company Jet Enterprises Pvt.Ltd (JEPL) of whichNaresh Goyal was the promoter.For public subscription of the shares of Jet Airways, thecompany came out with an with an initial public offeringcompany came out with an with an initial public offering(IPO) on February 18, 2005.

Inspite of making significant amendments to its Red HerringProspectus following comments from SEBI and investors, amajor block to IPO was Ownership of brand name with Jet

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 51

j pEnterprises.

The non-ownership of Jet Airways brand was listed as a riskfactor in the airline’s draft prospectus — post IPO.

Jet Airways and JEPL entered into a Common Law Agreementand Registered User Agreement.

Under the Registered User Agreement, Jet Airways arerequired to pay Jet Enterprises license fees on a quarterly basis

l l d i h f ll icalculated in the following manner:• 0.20% of our revenue up to Rs.11,500 million;• 0.15% of our revenue in excess of Rs.11,500 millionup to Rs.23,000 million; and• 0.10% of our revenue in excess of Rs.23,000 million

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 52

The Registered User Agreement and the Common LawAgreement are valid for a period of fifteen (15) years,commencing October 2000, and are renewable at the option ofJEPL for a further period of ten years

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Foreign Investors and promoters felt that the Registered UserAgreement was inappropriate and could be of more risk to JetAirways.Suggested that the Trademarks “Jet Airways” be bought in thename of the Company Jet Airways from JEPL and itspromoters.

Jet Airways, bought back the 'right, title and interest' in the"Jet Airways“ trademark from JEPL for

a one time fee of $7 million or around Rs 30 44

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 53

a one-time fee of $7 million or around Rs 30.44crore

Listed are a number of Facts concerning company value and reasons why an IP Audit should be made.

In 1993 IBM made US$10 Billion from licensing non-coretechnologies which would otherwise not have been used. In the EUthe average value of a patent is worth 500,000 Euros. In Europe 36%of patents are not usedof patents are not used.

Honeywell International uses a separate company HoneywellIntellectual Properties Inc, to manage it’s IP portfolio. Recently, itlicensed its LCD technology to competitors such as Sanyo, LGC,Philips, and Chungwa Picture Tubes.

In 2002, Korea exported technology worth US$0.6 Billion andimported technology worth US$2.7 Billion through licensing, R & Dsharing and Joint Ventures.

US company Texas Instruments earns more from licensing its unusedPatent rights than from its products.

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AMORTIZATIONA recognised intangible asset shall be amortized overits useful life to the reporting entity unless that life isdetermined to be indefinite.If an intangible asset has a finite useful life, but theprecise length of that life is not known thatprecise length of that life is not known, thatintangibles asset shall be amortized over the bestestimate of its useful life.The method of amortization shall reflect the patternin which the economic benefits of the intangiblesasset are consumed or otherwise used up.f

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 55

If that pattern cannot be reliably determined, astraight-line amortization method shall be used.An intangibles asset shall not be written down or offin the period of acquisition unless it becomesimpaired during that period.

The amount of an intangibles asset to beamortized shall be the amount initially assignedto that asset less any residual value.

AMORTIZATION

The residual value of an intangible asset shall beassumed to be zero unless at the end of its usefullife to the entity the asset is expected to continueto have a useful life to another entity and

(a) the reporting entity has a commitment from a thirdparty to purchase the asset at the end of its useful

6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 56

party to purchase the asset at the end of its usefullife or

(b) the residual value can not be determined byreference to an exchange transaction in an existingmarket for that asset and that market is expectedto exist at the end of the asset’s useful life.

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Table 1 – An Example of a Provisional IP Audit

IP VALUATIONWhen you measure what you are speaking

about and express it in numbers, you know

something about it, but when you cannot (or do

not) measure it, when you cannot (or do not)

express it in numbers, then your knowledge is

of a meager and unsatisfactory kind.

Sir William Thompson, Lord Kelvin (1824-1907)

© HL NARENDRA BHATTA6th July 2011 58ICAI- BANGALORE/INTELLOCOPIA/BHATTA

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6th July 2011 ICAI- BANGALORE/INTELLOCOPIA/BHATTA 59

What is IP Valuation?

The Foundation of IP valuation analysis consists of

four building blocks, each with an associated

question:

Purpose – Why are we valuing the asset?

Description – What is the asset?

Premise – How will the asset be used?

Standard – Who is the assumed buyer of the asset?

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What is IP Valuation?

Value is the representation of all future benefits of ownership,d i t i l tcompressed into a single payment.

IP Valuation is attaching a value to the intangible assets.

Value does not exist in the abstract and must be addressedwithin the context of time, place, potential owners and potentialuses.

Why focus on Intangibles?Valuation provides:

Better understanding of non financial assets and their importance

in company's value creation.

Better internal management of intangible assets

Starting point for internal measurement system that can be used to

track performance and improvements over time

Establish link between inputs, processes, the build of the

intangible assets and company performance.

Insights to assist management to make intelligent trade off

decisions with regards to investments.

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Intangible assets are of 2 types:

Identifiable Unidentifiable

Patents, copyrights, Trade secrets and Goodwill, Reputation,

Know how Trademarks and Brand names Management teamKnow how, Trademarks and Brand names Management team,

Distributor networks &

Trained workforce.

Exist by virtue of protection Constitute remaining value

afforded by law of business and important

during merger and

acquisition

Properties of IP AssetsTo have value, the assets must be:

identifiable from other assets of business

able to produce on-going benefits for the business

protected and not free in public domain

transferable from a seller to a buyer

For some valuation IP assets can be grouped into a single assetg p g

example: a copyright to workbook which describes a chemical

process is worthless without also having rights to the patent

protecting the same process

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IP characteristics and valuation

IP characteristics and valuation

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Parameters for valuation

What is the IP to be valued?

For whom is the valuation being done?g

What is the purpose of valuation?

The date of valuation.

What valuation method is appropriate to

circumstances?

Reasons for IP Valuation

• Corporate valuation for stakeholders

• M & A's

• Management buy out or buy in

• Privatization of public entity.

• Fund raising

• IPO

• Financial reportingFinancial reporting

• Assignment or acquisition

• Licensing in or out 

• Investment

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Existing use Value to the owner underthe existing marketing,operational andfinancial strategies.This ignores unexecuted

l d l

Licence Agreements, Merger/Acquisitons, Financial reporting, Litigationplans to develop patents

in new areasLitigation

Market Amount that would bepaid by a willing but notanxious, buyer to a

Licence Agreements, Merger/Acquisitons, , y

willing, but notanxious, selleradequately informed andacting in an open market

Transfer Pricing

Liquidation Assumes that theintangible assets are not

operating as part ofi d th t

Security for Debt Finances

Methods of valuation

Market value of the company LESS the tangibleassetsassets

Cost based( Historical and Replacement cost)

Comparable Market valuations

E i be efit eth dEconomic benefits method

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Overview of IPR- A CA's Perspective 33

Market value Principle:

Value estimated from net tangible assets

Process:Process:

Obtain net tangible assets from company balance sheet

Account for the market capitalization

Valuation of IP assets estimated by deducting net tangible assets

f k i li ifrom market capitalization

Result:

Valuation of IP assets as a collective entity

Case study:

Ford motor company brand example

Over 5300 US patents and well known brand

Summary of balance sheet of Ford:Summary of balance sheet of Ford:

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Overview of IPR- A CA's Perspective 34

Cost based

Principle of substitution: Value of asset estimated on basis to construct a

similar asset at current prices

Process: Identify historical costs of developing intangible assetProcess: Identify historical costs of developing intangible asset

Adjust for time value of money

Add an appropriate rate of return to calculate

developer's profit

Result: Cost of replacing the intangibleResult: Cost of replacing the intangible

Mainly 2 types: Historical cost method

Replacement method

Historical cost:

Case study: If researchers spent(F) $100,000 p.a. on a project for 2

yrs and if the time cost of money is 7% p.a then the historical

valuation is

200,000 + {(100,000x 0.07) + (200,000x0.07)}= $221,000

Replacement cost: Cost to replace the asset to develop a new one

Case study: In the above case if the failure rate was 40% and the

reasonable risk premium is 1.67 and the valuation would be

$221,000 x 1.67 = $369,070

In other words unless the team is confident that the project would

yield a return of $369,070, a investment in the project should not

be done

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Comparable markets 

Principle:Estimate value of intangible asset based on market prices of comparable intangible assetsgcase study:

Company Brand value Market capitalizationToyota $18.8bn (11%)

Mercedes $21.1bn (40%)Honda $15.2bn (46%)

Volkswagen $7.8bn (66%)At what brand value and at what percentage of market capitalization

would Ford be traded?An individual valuation of Ford shows it is valued at $36.4bn and has a

market capitalization of 75%

Economic benefits methodPrinciple: In order to have a value an IP asset must

produce a net economic benefit during its life.

Benefit from asset over lifetime must exceed cost.

Process: Life cycle costing:(Net present value[NPV] or

Discounted Cash flow[DCF]. Calculate

The cost of design, R&D, marketing, production and

distribution

The life of product or process

The life of associated IP and

The timing and quantum of income return

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Overview of IPR- A CA's Perspective 36

Case study

l f lExample of Valuation: Purpose Financial Reporting: 

Dr.Reddy’s Lab

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Example of Valuation… cont’d

Example of Valuation….cont’d

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Overview of IPR- A CA's Perspective 39

Example of Valuation….cont’d

Example of Valuation…..cont’d

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Example of Valuation…. Cont’d

Example of Valuation….. cont’d 

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DisclaimerVIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THE

AUTHOR –IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED

OPINION, AND IF YOU HAVE BENEFITS, YOU ARE FREE TO KEEP ITFOR YOURSELF WITHOUT EVEN AN ACKNOWLEDGEMENT !!

IF YOU RELY ON THE ABOVE VIEWS, SOME OF WHICH MAY HAVEALTERED INTERPRETATION, SUFFER LOSES AND YOU SUE ME FORNEGLIGENCE, I RESERVE not only MY RIGHTS TO RECOVER COSTS(!)but also raise new bill on you for relying upon these views!!

This presentation is primary meant for instructional use and not forC i l P bli ti Th hi f th TM & i ht d

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Commercial Publication. The ownership of the TM & copyrightedmaterial (especially cartoons) appearing in the presentation is dulyacknowledged. There is no infringement of rights in any regard.

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