Management of IP Srividhya Ragavan Associate Professor of Law University of Oklahoma College of Law

Individual/ Corporate/ firm levels Individual/ Corporate/ firm levels National & international levels National & international levels

What is IP Management Creation Creation Protection Protection Defense Defense Maximization Maximization

Various IPs involved Trademarks Trademarks –Right to publicity –Dilution –Cybersquatting Copyright Copyright –Nature of the work –Duration of copyrights Trade Secret Trade Secret Patent Patent

Managing the Patent Portfolio Protection Protection Creation of patent rights Creation of patent rights Management & Maximization Management & Maximization –License & term extension Defending infringement Defending infringement Managing validity of competitor’s patents Managing validity of competitor’s patents

Patent Management in the International Context Countries like India have a very short period under TRIPS to catch up with the developed world Countries like India have a very short period under TRIPS to catch up with the developed world –National legislations cannot compromise local issues for international prescriptions –While TRIPS uses the US Model as the standard, US patent model is a minimum threshold model – highly liberalized and patentee favored model –US model does not always apply to the rest of the world Hence the need for patent Management strategies Hence the need for patent Management strategies

Questions Substantive patent law Substantive patent law –Becomes more important in the light of national legislation & international prescriptions Procedural and operational details of patent law Procedural and operational details of patent law –Important to create balancing mechanisms between trade and welfare  Sec 3 of the Indian Patent Act is an example.

Levels of patent management strategies Reading national legislations & adapting it to local needs at different levels Reading national legislations & adapting it to local needs at different levels Japan is a great example of successful management of national patent regime Japan is a great example of successful management of national patent regime Copied from the west but tailored to suit national needs Copied from the west but tailored to suit national needs

Substantive Issues Doctrine of equivalents (DOE) Doctrine of equivalents (DOE) In the US, DOE a tool for infringement - Winans v. Denmead – late 1800s In the US, DOE a tool for infringement - Winans v. Denmead – late 1800s –Accused inventor does not copy ‘literally’ but makes ‘unimportant’ & ‘insubstantial’ changes. Considered the application of the doctrine in Warner Jenkinsons in 1997 Considered the application of the doctrine in Warner Jenkinsons in 1997 –Infringer introduced a dye that was exactly the same as WJ’s except for a PH of 6

Patented Dye Ph of 6 to 9 Infringer: Ph of 5 Prior art: Ph above 9

Fed Circuit felt that it was equivalent - SC reversed Fed Circuit felt that it was equivalent - SC reversed During prosecution, it was revealed that WJ had during prosecution altered the claims to traverse Booth patent During prosecution, it was revealed that WJ had during prosecution altered the claims to traverse Booth patent –PH of above 9 Hence, there was a question of whether prosecution history estoppes the application of DOE Hence, there was a question of whether prosecution history estoppes the application of DOE That lead to Festo in 2003 That lead to Festo in 2003

Liberalization of DOE Courts decided that prosecution history estoppel limits the applicability of DOE for narrowing amendments – forseeability bar Courts decided that prosecution history estoppel limits the applicability of DOE for narrowing amendments – forseeability bar Created a mess as far as infringement analysis is concerned Created a mess as far as infringement analysis is concerned –Judge and Jury issue also interferes Each of these were progressive holdings that were specifically tailored to favor the patentee Each of these were progressive holdings that were specifically tailored to favor the patentee

Tsubakimoto (1998) set the standard in Japan for an equivalents dispute – –It did not liberalize by following the US – –Instead, set its own standards based on the Japanese national needs

Tsubakimoto Following are the equivalents guidelines in Tsubukimoto Whether the differing elements are non- essential elements Whether the object of the patented invention can be achieved and the same effects can be obtained by interchanging as above, Whether both the products could have been made at the time of patent application Any factors suggesting that the accused device is intentionally excluded from the scope of the claim during patent prosecution. If the patentee intentionally seemed like excluding the technology – prosecution history will apply

The Japanese Judiciary has been very active in streamlining patent disputes. The Japanese Judiciary has been very active in streamlining patent disputes. – –The court has legislated key reforms to trigger a better and faster resolution of patent disputes in Japan - Wegner. – –Eg: Texas Instruments v. Fijitsu – for the first time, an accused infringer could use the invalidity defense in court. – –Before that it could be used only in the JPO level – –The court held that however, until JPO conducts its trial and officially invalidates the patent, the patent right would exist in rem

Reacting to the judiciary, the JPO made key reforms, first, speeding up the Trial for Invalidity and then, supporting statutory reforms that became effective in 2004 Thus, is the complimentary role of the court and JPO that India should seek to emulate. Japan has evolved one of the most reliable systems of patent claim interpretation of any country in the world.

Other instances of Japanese leadership Voda Cordis: US courts have used Paris Convention to hold that if a US patent is infringed by a US citizen on a foreign soil, there would be no damages for the foreign element. Voda Cordis: US courts have used Paris Convention to hold that if a US patent is infringed by a US citizen on a foreign soil, there would be no damages for the foreign element. Japan like Europe favors transnational enforcement to help patentee avoid litigation costs – Marine Bio dispute Japan like Europe favors transnational enforcement to help patentee avoid litigation costs – Marine Bio dispute

Other important features – PTO procedures Japan has an allowance rate of 29% (unlike the US where the rate is some 80+%) Japan has an allowance rate of 29% (unlike the US where the rate is some 80+%) –JPO rejected about 14.6 % of patents granted by the USPTO  Specifically, of those patent applications granted by the USPTO, 29.6 % were withdrawn at the JPO. – Applicants recognizing the greater scrutiny patents receive at the JPO give up the hopeless cases that are nevertheless prosecuted to issue in the United States USPTO has about 5000 examiners unlike in Japan which has a total of 1500 USPTO has about 5000 examiners unlike in Japan which has a total of 1500 –Small is efficient Japan achieves this level of efficiency by prioritizing back-end operations Japan achieves this level of efficiency by prioritizing back-end operations

Japan’s backend model Japan provides a deferred examination of its patent application by piggybacking off of foreign search and examination results Places premium on appeals and post-grant review – versus one 1% in the United States (30 % of JPO workforce does post- grant review)

Japan sports one of the best models of post-grant review. Even hiring decisions are very different – –US concentrates on PhDs and suffers from very high turnover (US turnover is 135% of Japanese workforce) – –Japan hires analytical smart graduates without emphasis on level of education but with minimum qualifications

India can take a lot from the Japanese experience in how they understood and later, fine tuned the patent system. India can take a lot from the Japanese experience in how they understood and later, fine tuned the patent system. Instead of blindly copying the defective American model, it is important to look at other models to evolve a truly desi patent regime within the confines of TRIPS. Instead of blindly copying the defective American model, it is important to look at other models to evolve a truly desi patent regime within the confines of TRIPS.