(B3212) RESEARCH METHODOLOGY AND IPR

UNIT-IV Study Materials Compilation: Dr M S R Murty

4.1 Patent Rights: Scope of Patent Rights.
4.2 Licensing and transfer of technology.
4.3 Patent information and databases.
4.4 Geographical Indications.
Sources of Information
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4.1 Patent Rights
Patents are granted to encourage inventions and to secure that the inventions are worked in India on
a commercial scale and to the fullest extent that is reasonably practicable without undue delay.
Patents are not granted merely to enable patentees to enjoy a monopoly for the importation of the
patented article. The protection and enforcement of Patent rights contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual
advantage of producers and users of technological knowledge and in a manner conducive to social
and economic welfare, and to a balance of rights and obligations

Rights of Patentee

a. In case of a patented product, the patentee shall have the exclusive right to prevent third parties,
from the act of making, using, offering for sale, selling or importing for those purposes that product in
India.

b. In case of a patented process, the patentee shall have the exclusive right to prevent third parties,
from the act of using that process, and from the act of using, offering for sale, selling or importing for
those purposes the product obtained directly by that process in India.

Unauthorized Claim of Patent Rights: If any person falsely represents that any article sold by him is
patented in India or is the subject of an Application for a Patent in India, he shall be punishable with
fine that may extend to rupees one lakh.

The Patent right shall not be abused by the patentee or person deriving title or interest on Patent
from the patentee, and the patentee or a person deriving title or interest on Patent from the patentee
does not resort to practices which unreasonably restrain trade or adversely affect the international
transfer of technology.

Patents are granted to make the benefit of the patented invention available at reasonably affordable
prices to the public.

Patented inventions are worked on a commercial scale in the territory of India without undue delay
and to the fullest extent that is reasonably practicable;

In order to obtain a patent, an applicant must fully and particularly describe the invention therein
claimed in a complete specification.

The disclosure of the invention in a complete specification must be such that a person skilled in the
art may be able to perform the invention. This is possible only when an applicant discloses the

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invention fully and particularly including the best method of performing the invention. The
specification is a techno-legal document containing full scientific details of the invention and
claims to the patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is
mandatory on the part of an applicant to disclose fully and particularly various features constituting
the invention. The Specification may be filed either as a Provisional or as a complete Specification.

Claims define the contours of rights, if and when a patent is granted for an invention. Hence, claims
are the most critical part of a Patent Application. In a complete specification the description is
followed by claims. Since, claims define the scope of legal protection, it is suggested that they
should be drafted carefully to cover all the aspects of the protection being sought at the same time
adequately distinguishing the prior art from the claimed invention.

Enforcement of Patent Rights

In most systems, a patent is the right enforceable in a court, usually to prevent the
manufacture, sale and use of a patented invention. It is not, as many people think, permission to
practice the patented invention, which may be subject to restrictions for other reasons such as
security or public health. Application is made to the court to stop the unauthorized manufacture,
sale or use of the invention, so that the court may grant the appropriate order and stop the
infringement. In practice, however, the process is less straightforward than it sounds.

Assessing the Scope of Patent Rights

When thinking about patent enforcement, a patentee must first assess what he has
patented. It is now a feature of just about all patent systems that a patent must include either a
specification containing claims or a description, claims or any required drawings (depending on the
terminology of the particular law). In most systems, the claims are decisive, as they define the scope
of protection sought and eventually granted through the patent. The specification or the
description and drawings may be used to interpret the claims, which must be fully supported by
them.

Most inventors use the services of a patent attorney to write the specification for them. An
inventor may not fully understand the specification, and particularly may have difficulties in
understanding the claims. Even where the patentee has some idea of the exclusive right granted to
him in his own country, it is very rare for him to know with any precision what rights he may have
in corresponding patents in other jurisdictions. The patentee’s first real understanding of the extent
of his patent rights often only comes to him when he is considering enforcement.

Thus the basis for enforcement of patent rights is established at the start of the patenting
process when the patent specification is written by the inventor or the inventor’s patent attorney.

The examination process in the Patent Office can modify the original wording. The inventor will
normally try to avoid any modification which will result in a limitation of the scope of protection, for
any reduction in the scope of protection makes it easier for a competitor to avoid infringement.
If a competitor can easily supply the market with something that is equivalent to the invention, but
does not infringe the patent, then the patent may be of limited commercial value. Patent Office
examiners should try to remember this when an applicant for a patent steadfastly resists amending
his claims in order to overcome an objection, but instead tries to deal with the objection by
argument. While acceding to an amendment might lead to the early grant of a patent on the
application, it may also lead to a patent right of doubtful commercial utility.

Rights of an applicant

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The applicant or the owner of the invention has the following rights: -

1. to be granted the patent, where the relevant requirements are fulfilled;

2. after the grant of the patent and within the limits defined below to preclude any person from
exploiting the patented invention in the manner referred to in section 53; and

3. to conclude licence contracts as provided for in the Act.

Obligations

The applicant or the owner of the invention has the following obligations -

1. to disclose the invention in a clear and complete manner, and in particular to indicate at least one
mode for carrying out the invention, in accordance with the requirements, and subject to the sanctions,
applicable under the Act;

2. to give information concerning corresponding foreign applications and grants;

3. to pay fees to the Managing Director, as prescribed in the Act and the regulations, subject to the
sanctions provided for therein; and

4. in connection with licence contracts and contracts assigning patents or patent applications, to refrain
from making undesirable provisions referred to in section 69.

Rights of owner of a patent

The owner of the patent has the right to preclude any person from exploiting the protected invention by
any of the following acts -

1. when the patent has been granted in respect of a product -

1. making, importing, offering for sale, selling and using the product; or

2. stocking such product for the purposes of offering it for sale, selling or using the product;

2. when the patent has been granted in respect of a process -

1. using the process, or doing any of the acts referred to in paragraph (1), in respect of a product
obtained directly by means of the process.

Enforcement of rights

The owner of a patent has the right -

1. to obtain an injunction to restrain the performance or the likely performance, by any person without
his authorization, of any of the acts referred to above; and

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2. to claim damages from any person who, having knowledge of the patent, performed any of the acts
referred to above, without the owner’s authorization.

3. to claim compensation from any person who, without his authorization, performed any of the
inventions, claimed in the published application, as if a patent had been granted for that invention;
Provided that the said person, at the time of the performance of the act, had -

1. actual knowledge that the invention that he was using was the subject matter of a published
application;

2. received written notice that the invention that he was using was the subject matter of a published
application, such application being identified in the said notice by its serial number.

Right of a prior user

A patent has no effect against any person (hereinafter referred to as “the prior user”) who, in good faith,
for the purposes of his enterprise or business, before the filing date or, where priority is claimed, the
priority date of the application on which the patent is granted, and within the territory where the patent
produces its effect, was using the invention or was making effective and serious preparations for such
use; any such person has the right, for the purposes of his enterprise or business, to continue such use
or to use the invention as envisaged in such preparations. The right of the prior user may only be
transferred or devolve together with his enterprise or business, or with that part of his enterprise or
business in which the use or preparations for use have been made.

Scope of protection

The scope of protection is determined by the terms of the claims but the description and the drawings
included in the patent may be used to interpret the claims.

Limitation of rights

The rights under the patent extend only to acts done for industrial or commercial purposes and in
particular not to acts done for scientific research. The rights under the patent do not extend to acts in
respect of articles which have been put on the market in Kenya or in any other country or imported into
Kenya. The limitation on the rights under a patent above, extends to acts in respect of articles that are
imported from a country where the articles were legitimately put on the market. The rights under the
patent do not extend to the use of articles on aircraft, land vehicles or vessels of other countries, which
temporarily or accidentally enter the airspace, territory, or waters of Kenya. The rights under the patent
are limited by the provisions of the terms of the patent. The rights under the patent are limited by the
provisions on compulsory licences for reasons of public interest or based on interdependence of patents
and by the provisions on State exploitation of patented inventions. The rights of the patent do not
extend variants or mutants of living forms or replicable living matter that is distinctively different from
the original for which patents were obtained where such mutants or variants are deserving of separate
patents.

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4. 2 Licensing and Transfer of Technology
4.2.1 Licensing
A license is a legal agreement by which the owner of an invention (licensor) grants rights to the licensee
to make, use, and/or sell the invention within the framework of license agreement. Any entity that aims
to manufacture and market a patented product needs a license from the licensor.

Licensing, in simple terms, is the buying or renting of the rights to intellectual property (the invention)
with the intent to produce and market, typically on commercial terms.. The inventor who licenses his or
her invention receives a fee for the invention being licensed. Such a payment could be a one-time
payment (lump sum payment) and/or percentage of revenue generated as royalty. The Licensing
Agreement therefore paves the way for an invention into a marketable product. The process of licensing
of invention varies from organization to organization but is typically negotiated between teams from
licensor and the licensee.

The major parameters in licensing include:

i. Exclusivity of the licence

ii. Lump sum upfront payment
iii. Rate and mode of payment of royalty.
iv. Territory for the licensing agreement
v. Liability issues

Advantages of licensing a technology

Licensing an intellectual property will help:

i. Ensuring commercialization of an invention
ii. Bring the product to market for public use.
iii. Generates revenue to the inventor(s) and the agency.
iv. Enhances the image of the organization as the product carries the details of the licensor.
v. Helps the economy of the country.

Agreements between IPR owner and collaborating company

i) Non Disclosure Agreement (NDA)

The inventor must enter into a properly drafted with the company before initiating discussions to ensure
that the invention is protected from unfair exploitation.

ii) Material Transfer Agreement

Tangible research materials created by researchers must be protected through a specific legal
agreement. Such agreements are called Material Transfer Agreements and are useful for commercial
development or even for further R&D. It is important to contact the IPR or Technology Transfer Units

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prior to receiving or sending out any research materials to enable protection of IPR from unfair
exploitation.

iii) Confidential Disclosure Agreement

The transfer of proprietary information, even in a casual conversation, could legally be considered a
public disclosure and hence loses protection. In the worst case scenario, such a disclosure could allow
the individual or a company, to whom this information was disclosed to use or transmit to others your
confidential information, thus placing it in the public domain. Further, this would preclude the possibility
of obtaining intellectual property protection and therefore may lose commercial value of the invention.
Therefore a legal agreement between the transferor of proprietary information (such as a researcher) to
another entity (such as a corporate representative of a researcher) is necessary. Such a legal document
for the protection of proprietary information is called a Confidential Disclosure Agreement or Non-
Disclosure Agreement.

Types of Licenses

i) Commercial Evaluation license

Commercial Evaluation License typically grants a non-exclusive right of limited duration to make and use
an invention for the purpose of evaluating its commercial potential. The license does not grant the right
to sell or otherwise distribute the invention. Companies are required to obtain a commercial patent
license for further use and/or development of the invention.

ii) Internal Commercial Use license

Internal Commercial Use License, grants the non-exclusive right to the licensee to make and use the
invention as a tool in the Research &Development and/ or production activities. These licenses do not
grant the right to sell or otherwise distribute the invention, but allow the licensee to use the invention.

iii) Non-exclusive and exclusive patent license

Both non-exclusive and exclusive Patent Licenses allow a company to commercialize the invention as per
the licensing agreement. An exclusive license limits the use of the invention to a single entity barring
others from use. Non-exclusive license, on the other hand, is given to multiple licensees to different
entities for commercial exploitation.

iv) Compulsory licensing

Compulsory licensing is a system when a government allows a company to produce a patented product
or utilize a patented process without the consent of the patent owner. It is well defined under the
patent act of a country. As per the Indian Law, a compulsory license can be sought after 3 years from the
date of the grant of the patent on the following grounds:

a. If the reasonable requirement of the public (domestic and foreign) need for the product have not
been satisfied

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b. If the Patented Invention is not available to public at a reasonable price;

c. If the Patented invention has not been worked in India.

Additionally, in the case of a national emergency and/or for preventing major disease epidemics, the
Controller can permit compulsory licensing irrespective of the above three conditions.

4.2.2 Technology Transfer

Technology transfer is the formal transfer of IP or other rights to any entity to use and commercialize
new invention. Typically, transfer technology is done after protecting the IPR ( viz., patents and
copyrights) after a process of due diligence about the company and with some terms and conditions for
licensing.

An invention would be beneficial for the public if transferred successfully through technology transfer
and marketed. In the health sector, tech transfer ensures availability of new and better products for
public use. Technology transfer and commercialization of inventions provides monetary benefits to the
inventors, agency supporting the inventions, the company and also the country.

Process of ‘technology transfer’

Technology transfer is a process that recognizes the practical and commercial aspects of basic science
research and discoveries and increases its outreach for the benefit of public and also encourages further
innovation.

Technology Transfer/management also comprises evaluation and management of invention portfolios,

patent prosecution, demonstration of knowhow, negotiating licensing agreements and periodic review
of cooperative research agreements already in place. Part of the technology transfer process involves
the prosecution of patents which is overseen by the National Patent and Trademark Office. Individuals
with advanced degrees in the subject are needed to review and process patents in the relevant field
such as a biomedical expert is needed to review and process patent of biotechnology.

Purpose of technology transfer

Coordination, nurturing, and linkages are the basic function of technology transfer process. The
coordination between technology users and developers as well as between researchers and
manufacturers is an important element of technology transfer. During the coordination process access
to relevant internal and external resources to individual projects and enterprises has to be enabled by
participating parties. The main ingredient for moving technology from a research laboratory to a
company for manufacture and marketing is an environment that is supportive of entrepreneurship. This
needs to be encouraged by providing guidance, counseling and resources to nurture the new
technology. For linking the various components of technology it is required to catalogue resources
related to business enterprises and connecting would-be entrepreneurs/researchers and other
technology developers to outside entities which can help in the manufacturing and marketing of
products.

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Advantages and Disadvantages of Technology Transfer

Advantages

i) Technology transfer brings economic benefits by increasing revenues for both technology donors and
receiver's benefits with new and better products, processes, and services that lead to increased
efficiency and effectiveness, greater market share and increased profits.

ii) Escalating visibility to researchers which allows researcher to generate and earn royalty income

iii) Technology transfer strengthens industry by identifying new business opportunities

iv) Technology transfer promotes the wider use and awareness of technology and systems.

Disadvantages

i) chances to have financial or commercial risk: patent application which are not licensed will only cost
money.

ii) tensions may arise within the organization which may be in between the recipient of licensing income
and those who know they will never make utilizable inventions

iii)Technology transfer activities may put researchers in conflict of interest situations, especially when
the transfer involves the creation of the spin- off company, hence Institutions should be aware of these
possible dangers.

iv) risk of non performance of licensee

Grading of Technologies for technology transfer

In terms of technology transfer, technologies can be categorized as:

i. developing technologies
ii. emerging technologies and
iii. established technologies.

Developing technology is an innovative technology that currently is undergoing bench-scale testing, in

which a small version of the technology is tested in a laboratory. Emerging Technology is a technology
that has been field-tested but lacks a long history of full-scale use. Information about its cost and how
well it works may be insufficient to support prediction of its performance under a wide variety of
operating conditions. Established Technology is a technology for which cost and performance
information is readily available. Only when a technology has been used at many different sites and the
results are fully documented, a technology can be considered as established.

Basic steps to be considered while transferring the technology

Technology transfer activities include

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 i. Evaluation/assessment of the invention.
ii. Protection of intellectual property relating to the technology.
iii. Finding the most suitable partner for licensing
iv. Licensing to that entity.
v. Demonstration of the working of technology
vi. Assist in Pilot level and later large scale manufacturing.

Freedom to Operate (FTO) Search

Before commercializing a product in a country or region, generally a Freedom to operate search is

suggested to confirm that the IP/technology being licensed does not infringe IP technology of another
party. A Freedom to operate is typically a professional and extensive search in the field of intellectual
property (not restricted to patents only).

A freedom to operate opinion related to patents usually includes the findings on patent searches in
relevant jurisdictions and their expiration dates.

If the searches results into presence of valid IP rights of others that are likely to be infringed, one can
negotiate with those parties to license their IP to facilitate bringing out the intended product into the
market. FTO also helps the avoidable legal action by others,

Assessment of commercial potential of a technology

Commercialization potential is most significant aspect of an effective technology transfer. Establishing a

technology's prospects for commercial success depends largely on five factors:

1. Demand of the technology: Technology must be new or improved version of the existing technology
i.e. if it is simpler, cost effective or more efficacious.

2. Technical Development: The time, materials, and personnel needed to reduce the technology to
practice and protect rights to the resulting product.

3. Regulatory Clearance: The testing needed to demonstrate the product's utility and safety, to meet
regulatory requirements of the country in order to minimize or manage associated risks.

4. Manufacturing Requirements: Manpower, Facilities, and equipments needed to make the product.

5. Market Development: Plan for successful marketing, created by assessing perceived need for the
product, size of potential market, expected sales, advantages over competing products, and the cost of
promoting the product.

6. Financial Feasibility: The development cost, production cost, operating expenses in relation to sales
potential, net profit, potential liabilities, and return on investment.

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Sale of a technology versus technology transfer

Technology transfer is not about selling some hardware to a client who is then left with the task of using
it as he/she deems fit. Technology transfer is the process of imparting of knowledge, skills and
methodologies involved in the whole production cycle. Technology transfer is a system that
encompasses the social and economic fabric of a country. Where technology has been effectively
transferred, there should be a visible change - from the person to the production system as well as
compatibility with the needs, in the institutional framework, skills, training, financial capacity,
promotion, and active support of endogenous capacity and appreciation of the natural environment of
the recipient country. Technology transfer also has to do with disseminating information on the
technologies themselves.

Success in technology transfer by Academic institutions

The success in technology transfer can be categorized as „Numerical’ and „Non-numerical’. Under the
numerical measures the „early numerical measures‟ include the number of patents filed, license
agreements executed and new companies formed. „Late numerical measures‟ include revenues from
license fees, royalties and cash from equity investments paid to the academic institutions and the
numbers of products successfully introduced to the market. The „Non-numerical‟ includes - university's
ability to retain entrepreneurial faculty, attract outstanding graduate students, contribute to the
institutional reputation for innovation, augment its research program through interaction with the
private sector and enhance its reputation for providing highly trained students for the industrial work
force. Success is also demonstrated by the impact the products have on the lives of general public.

Modes of international technology transfer :

i. Trade

ii. Foreign direct investment (FDI)

iii. Licensing and other forms of formal technology trade

iv. Movement of people

v. Cross-border information flows (for example, through online patent databases)

4.3 Patent Information and Databases

Introduction
Patent information searches are done, as a part of the application drafting process
before filing patent applications, or while planning and preparing for patent litigation.

In the recent past, this traditional micro-level use of patent information has evolved into
a much more strategic use of patent information, thanks to the development of
customized computerized databases of patent information.

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In recent years, economists, social science researchers, policymakers, businessmen
and professionals have begun to make increasing micro-level and macro-level use of
patent information. This is being done to analyze, for example, patenting activities of a
country' technical patterns of internationalization; patenting activities in a sector,
technology or company to ascertain or forecast the direction of technical change, or
ascertain the relative technological position of a company in a marketplace; etc. As
such, the use of patent information has expanded to many different tactical and
strategic business, research, and policy making activities at national, institutional or
enterprise levels.

What is Patent Information?

Patent information includes not only the content of published patent documents but also
bibliographic and other information concerning patents for inventions, inventors’
certificates, utility certificates and utility models. It is the largest, well-classified and most
up-to-date collection of technical documents on new and innovative technologies.

Patent applications are filed in accordance with the requirements of national or regional
patent laws. An applicant may be a public and private company, government agency,
researcher in a university or in a research and development institution, or even
individual inventors.

So far, around the world some 40 million patents have been published, and that too in
all possible technical fields. To these, some one million additional patent documents are
added every year.

A patent document contains, in a standardized form, a wealth of information about the

state-of-the-art, adjudged in the international context, in technological developments in
that area of technology. As a first step, it is essential to grasp clearly the basic concepts
of the patent system so as to appreciate better the practical usefulness of patent
information.

Basics of Patents
A patent provides its owner an exclusive right over a claimed invention, which is granted
by the industrial property or patent office of a country or group of countries on the basis
of a patent application. It is granted done after following the procedure prescribed in the
relevant patent law and regulations. The exclusive right of the owner provides a legal
right and possibility to the owner to prevent others from making, using, offering for sale,
selling or importing the patented invention without the owner’s permission. In return, the
owner is required to disclose the claimed invention to the public. Describing the
invention in a patent application does this. A patent application consists of a front cover,
an abstract and a patent specification, including drawings (if necessary), a description
and one or more claim. The claims determine the patentability of the invention as well
as define the exact scope of the claimed invention.

The front page of a published patent document generally displays bibliographic

information such as the title of the invention, the date of filing, the priority date, the
relevant technical field, the name and address of applicant(s) and inventor(s). It also

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contains an abstract and a representative drawing. Bibliographic information is an
essential means of identifying, locating and retrieving patent documents.

The patent specification is the most important part of a patent document, as it enables
a person to understand the claimed invention and the technical information contained in
it. The specification should disclose the invention clearly and precisely. Preferably, it
should be illustrated by examples to explain how to work or carry out the invention in
practice so as to enable anyone skilled in the relevant art to do so likewise, without
undue experimentation. In most countries, a specification of the invention includes the
background of the invention, summary of invention, brief description of drawings (if
necessary) and a detailed description of the invention.

The claims define the scope of legal protection. While drafting claims, the applicant will
draft them as broadly as possible, whereas in an industrial property or patent office,
during a full substantive examination, if done, a patent examiner would generally like
to narrow the claims to the actual invention described in the specification. This may be
combined effort of the applicant and the office concerned makes the scope of protection
clear and clarified.

In patent litigation, interpreting claims is the first step in determining whether the patent
is valid and whether the patent has been infringed.

A patent is granted by a national or regional patent office and is valid for 20 years from
the filing date of the application or from the date of an earlier related application. A
patent is a territorial right and has no effect beyond the national or common regional
boundary of the country or countries concerned.

Merits and Shortcomings of Using Patent Information

In most countries, a patent application is published 18 months after it is filed. So, there
is always a time lag between the publication of patent application and the point in time
at which the invention was made or completed. Generally, however, patents are granted
well before a product based on a patent is introduced in the market. As such, the
publication of a patent application, despite the time lag, is invariably the earliest point in
time at which the relevant information becomes available to the public as the first
published detailed and up-to-date information.

Since most countries require the invention to be disclosed in a manner that is

sufficiently clear and complete for it to be carried out by a person skilled in the relevant
art, therefore, a patent document has much more detailed information about a
technology than any other type of scientific or technical publication. It is also a unique
source of information, as it is estimated that, on average, some 70 % of the information
disclosed in patents is never published anywhere else.

Patents do not cover every kind of inventive activity in every country. Some inventions
that are patentable are either kept as trade secrets or put in the public domain through
defensive publication so as to prevent all others from obtaining a patent on that
invention. Both are valid business strategies. Patents, however, do cover virtually every

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field of technology although the subject matter excluded from the purview of patents is
variable from one country to another. Therefore, consulting non-patent literature is often
obligatory to get a complete picture of the prior art. Even so, patent documents remain a
key tool for analyzing trends in the diffusion of key technologies for the purpose of
generating specialization profiles of countries or companies of interest.

Analyzing Patent Information

There are two primary ways of analyzing patent information: qualitative and
quantitative.

The qualitative method shows more closely the content of the individual patent
documents. The quantitative method results in statistical processing. These two
methods have quite different objectives and different ranges of applications. Patent
analysis can be displayed by visual representation using bar graphs, polygonal line
graphs, pie charts, radar charts and other charts/graphs, which are called ‘Patent
Maps’. Visualization is an especially effective way of representing the results of this type
of analysis.

Today, electronic databases, analytical software products and private service providers
with their own proprietary value-added patent or technology databases are available for
assisting in the analysis of patent information.

Availability of Patent Information

Databases on CD-ROM
Information technology allows accessing patent data in text and picture form on CD-
ROM. CD-ROM databases are very convenient for documentary searches. Users need
no outside connections, and can work with simply a CD-ROM driver plus a computer.

CD-ROM databases, however, have some drawbacks. One problem is with their
updating. As on-line databases can be easily updated on a regular basis, the
information on CD-ROM rapidly becomes out of date, at least for certain types of
analysis. It is also a problem to easily use CD-ROM databases to compile statistical
series; hence, they are not yet suitable for statistical applications.

On-line Databases
Internet-based databases are on-line databases. Anyone who has access to the
Internet may be able to browse the full text of published patent documents via free of
charge databases or commercial databases. As access to these kinds of databases is
not restricted across national borders, so users worldwide can very easily access patent
documents from a computer connected to the Internet.

As of now, many national patent offices have launched free-of-charge patent

information databases, which are open to the public. For example, the Full-Text and
Full-Page Image Database of the United States Patent and Trademark Office (USPTO)
is one of the earliest and free online patent information services. Another major on-line
free patent database is esp@cenet®, which has some 30 million patent documents. The
free services work well for simple searches, based on key words, such as a known

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patent number, name of the inventor(s) or applicant(s), a key word in the title, etc., but
are not a suitable tool for executing more complex investigations and legally motivated
searches.

There are a number of private companies that have commercial databases. These
include Derwent, Dialog, STN, Questel Orbit, Micropatent, WIPS, etc. Commercial
services offer enhanced or value added patent information, based on the actual
requirement of particular end users. Commercial database hosts offer different types of
clearing procedures or fees. Some collect a flat fee in advance that expires after a
certain period of time, while others calculate database usage time plus document
royalties or have no time cost but slightly higher document royalties.

Reasons for Using Patent Information

Patent information is more than just technological or legal information. When developing
a new product, comparative technological information may determine the success or
failure of the product and, in turn, the success or failure of the company itself. Some of
the practical applications of patent information include:

A Tool for Creative Thinking

Patent information provides a source of technological information that can be used by
researchers and inventors to find new solutions to technical problems. A specific
methodology developed on the basis of patent information is the TRIZ methodology
(Russian acronym for Theory of the Solution of Inventive Problems). Genrich Altshuller
developed the TRIZ methodology and his colleagues, starting in 1946, based on the
study and analysis of a set of worldwide patent documents. TRIZ began with the
hypothesis that there are universal principles of invention that are the basis for creative
innovations that advance technology, and that if these principles could be identified and
codified, they could be taught to people to create or enhance their inventive capabilities.

The TRIZ research has proceeded in several stages and more than 2 million patent
documents have been examined, classified by level of inventiveness, and analyzed to
look for principles of innovation.

TRIZ is currently being applied internationally to create and to improve products,

services and systems. Large and small companies, including many Fortune 500
companies are using TRIZ on many levels to solve real and practical problems and to
develop strategies for the future of technology. Based on one of the conclusions of the
theory, that inventiveness and creativity can be learned, universities worldwide have
introduced undergraduate courses related to the TRIZ methodology to enhance
creativity and inventive thinking abilities of students. Patent information, therefore,
provides an extremely useful source of information for learning and developing creative
problem solving and innovation strategies.

Input for Licensing Strategy

When considering “licensing in” of technology owned by others, “licensing out” your
technology or “cross-licensing” between two patent portfolio owners, you must collect

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 reliable information on the target or key technology in order to take the right decision. If
the technology in question is valuable enough, it will generally be protected by a patent
because of the intrinsic insecurity and difficulty of keeping it as a trade secret.
Therefore, the analysis of patent information provides you with valuable technical and
business information regarding target or key technology. Before entering into licensing
negotiations, it is most important that you have a very good understanding of the target
technology itself, its value, in terms of its strengths and weaknesses, which is aided
considerably by a thorough and careful analysis of relevant patent information.

While preparing to ‘licensing in’ of technology, analyze patent information to consider:

 whether the technology in question is in the public domain in your target market due
to its non-protection, expiration, non-payment of maintenance fee or invalidation of
the patent in a court proceeding;
 whether there is a possibility of someone else bringing an action for infringement
against you to make you liable for payment of any damages,
 whether the technology is overvalued or undervalued by comparing it with other
related or alternate technologies, etc.
Similarly, while preparing to ‘license out’ your technology, analyze patent information to
consider:

 who could be prospective licensees in the marketplace;

 how valuable is your technology in order to prepare an attractive offer; and
 whether it is a core technology in your business, which if licensed out might become
an obstacle to continue to practice this technology, etc.
‘Cross-licensing’ is an exchange between two companies to license one or more
patents to each other, which gives the companies the freedom to operate; that is,
without any fear of being accused of violating the patent rights of the other party.
Payment(s), if any, in a cross-licensing agreement is/are made by the party, which is
perceived to have a patent portfolio of lesser value. Let us say that Company X is
negotiating with Company Y. If Company X argues that its portfolio is more valuable
than that of Company Y, it may require Company Y to fill the gap in the form of one time
or recurring payments. Here, patent analysis plays a role in comparing the patent
portfolios of the two companies and in identifying key patents, so that it can help to
decide who should pay whom and how much.
Supporting Mergers and Acquisitions (M&A)
If a company wishes to acquire a specific technology along with other complimentary
assets and has no idea where to obtain it, then it first needs to identify all the companies
with relevant patents and related assets. A patent search help to identify all of the
patents related to the area of interest. Once one or more potential target
technologies/companies are identified, then the company can undertake additional
patent analysis to narrow down its choices to decide which of the companies is the best
merger or acquisition target.

Once a company identifies a target company, patent analysis can also address
additional issues such as: Is the target’s technology as good as it is claimed to be? Is
the company priced fairly? Who are the key inventors and will they stay with the merged

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or acquired company? Let us analyze a case. As part of a broad strategic plan to fill
gaps in a company’s technology base, a large high-tech company acquired a small
specialty business. Soon after completing the acquisition, the acquiring company
discovered that R&D capabilities of the acquired company were quite limited, and
certainly not consistent with the perception that it had bought a company with strong
technological capabilities. Its technological capability was dependent on one key
researcher and he did not come along as part of the deal. He was transferred to the
parent company before the sale was completed. If patent analysis had been done
before proceeding with the acquisition, the company would have been able to find that
out who the key researcher is and then could have taken appropriate measures to retain
him.

Guiding Management of Research and Development (R&D)

In order to enter into a new business or to develop a new product, a company should be
able to seize the overall image of the relevant technology field and accurately forecast
the market needs. Patent analysis makes it possible to find out the flow of technology
from elementary technologies along with the expansion of those technologies, the trend
of technological change, the life cycle of a technology (consisting of growth,
development, maturity and decline), problems and solutions in the development of a
particular technology, competitors’ technologies and solutions to cope with possible
problems. Knowing the life cycle of a technology makes it possible to judge the timing of
development policy and focus on certain development themes. It can also prevent an
infringement from occurring, which would save a huge amount in litigation expenses
and compensation for damages.

Patents are often linked to research and development and can be considered as
indicators of R & D output. If one company has more patents than another does, then
this suggests that the company has a stronger commitment to R&D. Not all patents,
however, are equally valuable. A few patents are for radical inventions that change the
world; most patents are granted for incremental but non-obvious inventions. A patent,
which is more frequently cited than other patents of the same age, is regarded as a
patent of greater impact or of higher quality. From links between patents revealed
by patent citation analysis, it is possible to target the acquisition of strong patents,
which results in the enhancement of R&D output and, consequently, much improved or
new products.
Human Resources Management
It has been repeatedly shown that a small number of highly prolific inventors drive
technological development and a much larger numbers of researchers produce only one
or two patents in any laboratory or company. Patent analysis, such as a co-inventor
brainmap, can show the key inventors who are vitally important for the future of the
company. Such brain maps can identify not only star inventors within a company, but
key inventors in other companies, which is a useful analysis for headhunting and in
developing an effective M&A strategy.

Conclusion

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In a knowledge-driven economy, effective use of patent information is a contributor to
the success of any enterprise, large or small, as patent document collections have an
unmatched wealth of detailed and practically-oriented business, legal and technical
information compared with any other types of business, legal, scientific or technical
publications around the world. Moreover, fast paced developments in the use of
information and communication technologies, coupled with free-of-charge or
commercial patent/technology databases and use of analytical software for rapid and
detailed analysis of patent information, have opened new vistas for smart businesses in
their strategic and tactical use of patent information for honing their business strategy in
domestic and export markets. And all this is of special relevance to small and medium-
sized enterprises, which are now capable of reaping the benefits from the use of
valuable legal, technical and business information contained in patent
documents/databases with its high potential benefits and at a relatively low cost.

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4.4 Geographical Indications
Geographical Indications

A Geographical Indication (GI) is a sign or indication used on products that have a specific
geographical origin and possess qualities or a reputation that are due to that origin.

In order to function as a GI, a sign must identify a product as originating in a given place.

In addition, the qualities, characteristics or reputation of the product should be essentially due to
the place of origin. Since the qualities depend on the geographical place of production, there is
a clear link between the product and its original place of production.

Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit
drinks, handicrafts, and industrial products.

Examples of Indian Geographical Indications:

Basmati Rice , Darjeeling Tea , Kanchipuram Silk Saree, Alphanso Mango, Nagpur Orange,
Kolhapuri Chappal, Bikaneri Bhujia, Agra Petha etc

Rights provided by geographical indications

A geographical indication right enables those who have the right to use the indication to
prevent its use by a third party whose product does not conform to the applicable standards. For
example, in the jurisdictions in which the Darjeeling geographical indication is protected,
producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their
tea gardens or not produced according to the standards set out in the code of practice for the
geographical indication.

However, a protected geographical indication does not enable the holder to prevent someone
from making a product using the same techniques as those set out in the standards for that
indication. Protection for a geographical indication is usually obtained by acquiring a right over
the sign that constitutes the indication.

The protection for a registered geographical indication will remain valid unless the registration is
cancelled.

Geographical indications registered as collective and certification marks are generally protected
for renewable ten-year periods.

Granting protection for geographical indications:

Protection for a geographical indication (GI) is granted by a national (regional) competent

authority upon request. In some countries the function of granting GI protection is carried out by
a special body responsible for GI protection. In other countries, the national intellectual property
(IP) office carries out this function. A directory of IP offices is available on the WIPO website.

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Conditions to obtain geographical indication protection:

A sign must qualify as a geographical indication under the applicable law and not be subject to
any obstacles to registering a geographical indication (GI). Generally, an important requirement
under the definition, is that the good identified by the GI needs to have a link to the geographical
origin. This link may be determined by a given quality, reputation or other characteristic
essentially due to the geographical origin. In many legislation a single criterion attributable to
geographical origin is sufficient, be it a quality or other characteristic of the product, or only its
reputation.

Geographical Indications: Need to protect in India

i. India is a rich storehouse of goods with reputation or quality which can be adduced to
their geographical origin or place of manufacture, need to protect Indian Treasures.

ii. The economic potential of these goods is enormous.

iii. To prevent GI goods becoming generic

iv. Need for a rule based system that is open, fair and provides for an enforcement
echanism

Protection may be requested by a group of producers of the product identified by the

geographical indication. The producers may be organized as an entity, such as a cooperative or
association, which represents them and ensures that the product fulfils certain requirements
which they have agreed upon or adhered to. In some jurisdictions, protection may also be
requested by a national competent authority (for example, a local government authority).

In December 1999, the Parliament had passed the Geographical Indications of Goods
(Registration and Protection) Act, 1999. This Act seeks to provide for the registration and better
protection of geographical indications relating to goods in India. The Act would be administered
by the Controller General of Patents, Designs and Trade Marks- who is the Registrar of
Geographical Indications. The Geographical Indications Registry would be located at Chennai.

Applying for GI Registration: Producer and User

An application for the registration as an authorised user of the registered geographical indication
shall be made by a producer and jointly by the registered proprietor of the said GI

‘Producer’, means, :

- any person who produces the goods in case agricultural goods, and includes the person
who processes or packages such goods;

- any person who exploits the goods in case of natural goods,

- any person who makes or manufactures the handicraft or industrial goods ,

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 - any person who trades or deals in such production, exploitation, making or
manufacturing of the goods.

Benefits of GI Authorised User Registration

i. GI Authorised user registration provides the authorized user the exclusive right to use
the registered GI on the specified goods.

ii. The Authorised users can initiate infringement actions.

iii. With the protection assured by GI registration, the market is developed, pirates and
counterfeiters cannot encroach that market.

iv. Consumers are guaranteed of the genuineness of the product and of quality
assurance.

v. GI Promotes Brand building.

.,

GEOGRAPHICAL INDICATION:

In India the applicable act is Geographical Indications of Goods(Registration &

Protection)Act,1999 & concerned rules are given bu Geographical Indications of Goods
(Registration and Protection) Rules,2002 .

LEGAL BENFITS

GI confers legal protection to Geographical Indications in India.

Prevents unauthorized use of a Registered Geographical Indication by others.

It provides legal protection to Indian Geographical Indications which in turn boost exports.

SOCIO-ECONOMIC BENEFITS

GI promotes economic prosperity of producers of goods produced in a geographical territory.

Some facts about GI registration in India:

 Registration is not compulsory

 Valid for a period of 10 years

 Can be renewed continuously for further period of 10 years at each subsequent

renewals

 If not renewed it is liable to be removed from the register

 Can not be assigned, transmitted, licensed, pledged, mortgaged

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Application for Registration of GI in India

Application must be made in triplicate. The application shall be signed by the applicant or his
agent and must be accompanied by a statement of case.

 The statement has to show how the GI serves to designate the goods as originating from
the concerned territory having a special quality, reputation or other characteristic. Details
regarding the special characteristics and the way standards are maintained should be
specified. Three certified copies of map of the region to which the GI relates are to be
submitted. Details of the special human skills involved or uniqueness of the geographical
environment or the inherent characteristics to which the application relates. Details of the
inspection structure if any to regulate the use of the GI in the territory to which it relates.

Evaluation of the GI application

i) The Registrar of Geographical Indications scrutinizes the application for any

deficiencies and, if any found, communicates the same to the applicant.

ii) A consultative group of experts well versed on the subject will be appointed to
ascertain the correctness of the claims made.

iii) Application is published in the Journal of Geographical Indications

iv) If no opposition is received, then the same is registered after expiry of four months
from the date of publication.

GIs versus Trademark

Geographical indications (GIs) identify a good as originating from a particular place. By contrast,
a trademark identifies a good or service as originating from a particular company.

A trademark often consists of a fanciful or arbitrary sign. In contrast, the name used as a
geographical indication is usually predetermined by the name of a geographical area.

Finally, a trademark can be assigned or licensed to anyone, anywhere in the world, because it is
linked to a specific company and not to a particular place. In contrast, a GI may be used by any
persons in the area of origin, who produces the good according to specified standards, but
because of its link with the place of origin, a GI cannot be assigned or licensed to someone
outside that place or not belonging to the group of authorized producers.

Sources of Information:

i. wipo_pub_952_GeoIndications
ii. https://www.icmr.nic.in/sites/default/files/Books/Intellectual_property_rights_.pdf
iii. http://www.ipindia.nic.in/

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