Jyoti Sagar IPR

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IPR - A CORPORATE STRATEGY TOOL A PRESENTATION by Jyoti Sagar, Senior Partner Kumaran & Sagar - J. Sagar Associates January 13, 2001

SCOPE: 

SCOPE IPR & its Forms IPR Cycle : Growth Driver Brands and Patents : Key IPR Forms Creation, Protection and Exploitation of IPR Brands Patents Case studies on IPR corporate strategy

FORMS OF IPR: 

FORMS OF IPR IPR Trademarks or Brands Copyright Trade Secrets Patents Designs

IPR – A BUSINESS ASSET: 

IPR – A BUSINESS ASSET Intellectual property – a business asset Like real estate: must be defined, value assigned, used IPR: developed, maintained, upgraded, protected, used to realize value

THE IPR CYCLE : 

THE IPR CYCLE Creation Protection Exploitation

CREATION OF A BRAND: 

CREATION OF A BRAND

BRAND: 

BRAND Trade Mark or Brand : A word, device, sign or symbol capable of graphic representation Source identifier : Reebok, MRF, Nirma Choosing a mark: Real Conflict between Marketing and Legal imperatives Generic, descriptive and laudatory marks : great from marketing perspective : impossible to register

BRAND : 

BRAND Suggestive words: Whirlpool, Surf, Vaporub, Superflame, Safeguard, Limca Arbitrary words: Promise, Prudent, Wheel, Liberty Invented words :PEPSI, REEBOK , EXXON make the best brands

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PROTECTION OF THE BRAND

BRAND PROTECTION: 

BRAND PROTECTION Register the brand In the relevant jurisdictions In the relevant classes For the relevant goods and possible extensions Keep registration in force by renewal Use the brand correctly In advertising On products In business stationery, brochures and invoices Pursue Infringers and misusers

ADVERTISMENT CASE STUDY: 

ADVERTISMENT CASE STUDY What is wrong with this ad? What is the next best thing to your home? SAND DANCE Sand Dance’s homely hospitality & idyllic surroundings recreate the ambiance of home You can sand dance your way into bliss This is what is wrong: SAND DANCE is used as a noun in the first line No trademark designation indicated; such as ™ or ® The mark is not used consistently wherever it appears

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CORRECT ADVERTISING What is the next best thing to your home? SAND DANCE™ Holiday Resort At SAND DANCE™ Resorts homely hospitality & idyllic surroundings blend to recreate the ambiance of home. SAND DANCE™ Resorts offer you the best in comfort POINTS TO NOTE SAND DANCE used as an adjective to qualify the noun ‘Holiday Resort’ Consistent use of the mark Trademark designation indicated with the symbol ™

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“HAVE YOU CHEERY BLOSSMED YOUR SHOES TODAY” What is wrong with the above ad? ADVERTISMENT CASE STUDIES

ADVERTISMENT CASE STUDY: 

ADVERTISMENT CASE STUDY We interrupt our advertising for a word from our lawyers Xerox is a tradename and a registered trademark. As a tradename, it stands for Xerox Corporation. As a trademark, it identifies our products. And it shouldn’t be used when referring to anybody else’s copier, duplicator, paper or whatever. (Let them use their own name.) Lawyer or not, remember that. O.K.? We return you now to our regular scheduled advertising XEROX XEROX CORPORATION PLACED THE FOLLOWING AD

REMEMBER, INCORRECT USAGE HAS BEEN THE DEATH TOLL OF WHAT WERE AT ONE TIME GOOD TRADEMARKS: 

REMEMBER, INCORRECT USAGE HAS BEEN THE DEATH TOLL OF WHAT WERE AT ONE TIME GOOD TRADEMARKS

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ASPRIN CELLOPHANE THERMOS ESCALATOR GRAMOPHONE LINOLEUM YO-YO Did you know the following started life as trademarks? ENDED UP BECOMING GENERIC NAME FOR THE PRODUCTS

EXPLOITATION OF THE BRAND EQUITY : 

EXPLOITATION OF THE BRAND EQUITY

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EXPOITATION Brand Equity may be exploited through: Licensing of the Brand under quality control Franchising through Brand Extension to Promotional Products/Service Merchandising Examples: Wills - Articles of Clothing, Four Square - cricket gear, Bacardi Blast - CDs and Tapes, Pepsi- Articles of Clothing, Walt Disney Characters

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Look at these brand values.. (in US$ Billion) Coca Cola 68 Microsoft 65 IBM 52 GE 42 Nokia 35 Intel 34 Disney 32 Ford 30

PATENT: 

PATENT Patent is a limited monopoly right given by the State for an invention BRISTOL-MYERS Co. 1975 RPC 127 “.. in essence, what the law of patents is about is stopping people from using patented things …”

PATENT: 

PATENT Purpose of a patent: reward for innovation, foster industrial growth disclosure of invention to the public, instead of keeping it secret investment of capital in potential fields of technology secure investment & manufacture gives freedom to publish, explore, exploit

PATENTS: 

PATENTS Registration of patent must for protection Publish and perish; or Patent, publish, profit and prosper! Registration is territorial : filing in each country Patent Cooperation Treaty : facilitates international filing

SAKICHI TOYODA’S WEAVING MACHINE - 1929: 

SAKICHI TOYODA’S WEAVING MACHINE - 1929 What does this have to do with what is now a world class Japanese Company!!

SAKICHI TOYODA’S STORY: 

SAKICHI TOYODA’S STORY Granted Patents on Automatic Weaving Machine Earned huge royalties post 1929 Invested in R/D on Automobiles Founded “TOYOTA Motor Company”

PATENT POWER: 

PATENT POWER Polaroid Vs. KODAK - Instant Camera Story Polaroid inventor of instant camera : broad patents obtained in 60’s K started developing own technology to beat P’s patents & introduced their version of the instant camera P sued K. for infringement of 12 patents - won the suit and awarded more than US$ 1 Billion drove K out of instant picture business for 15 years! Kodak Vs. Fuji - Single Use Camera Story K prepared broad patent base in US though Fuji was first in the technology K established dominant business in US Fuji’s late entry compelled it to compete with 28 others!!

PATENT - A SOURCE OF REVENUE : 

PATENT - A SOURCE OF REVENUE Patent licensing - good source of revenue IBM earns more than $ 1 B per year from royalties > 30 % of net profits!!!! Texas Instruments Story leading manufacturer of patented transistor in 50’s 70’s & 80’s: lost market to Japanese copy cat products Texas regains ground in late 80’s by aggressive patenting strategy Forcing licensing on Japanese - and earning billions in royalties!!

CORPORATE IPR STRATEGIES : 

CORPORATE IPR STRATEGIES Sepracor Inc: US pharma company Business strategy: innovate and thrive improve blockbuster drugs patented by others - basically by removing side effects obtain patent on improvement license the improvement to owner of original drug patent and earn royalties Prozac, Claritin and Seldane - some of the blockbuster drugs improved

SEPRACOR - INNOVATE & THRIVE: 

SEPRACOR - INNOVATE & THRIVE SELDANE STORY Hoechst’s Seldane had side effects of cardiac arrythmia Sepracor eliminated side effects Was granted patent in 1993 Licensed to Hoechst in 1993 Hoechst named improved version “Allegra” Seldane banned as “Allegra” was safer Allegra gave Hoechst extended market life

CORPORATE IPR STRATEGIES : 

CORPORATE IPR STRATEGIES Dow Chemical Company Herbert Henry Dow: chemist & astute businessman Founded The Dow Chemical Company : 1897 Henry Dow received over 100 patents Dow had TM, know-how, patents in its IP portfolio Used patents as basis of business

DOW’S STRATEGY: 

DOW’S STRATEGY Developed Intellectual Asset Management Model (IAM) Mapped its existing patents : weeded out old technology Studied Competitors’ patents Built “Knowledge Tree” Key words: Assessment, Classification, Valuation, Investment & Portfolio Management

DOW’S STRATEGY: 

DOW’S STRATEGY Built fortress of patents to capture technology New molecule Derivatives New use treatment Uses of derivatives making molecule

Then there are others with different strategies !!: 

Then there are others with different strategies !! US Patent No. US4233942. A device for protecting the ears of a long-haired dog from becoming soiled by food while it is eating. A tube contains and protects each of the dog's ears. The tubes are held away from the dog's mouth and food as it eats.

Then there are others with different strategies !!: 

Then there are others with different strategies !! International Patent Application No. WO9701384. A leash for walking an imaginary pet. It has a preformed shape and supports a simulated pet harness 42 and collar 54. A micro loudspeaker in the collar is connected to an integrated circuit in the handle, to produce a variety of barks, growls etc.

Then there are others with different strategies !!: 

Then there are others with different strategies !! UK Patent No. GB1204648. Irrigating the Sahara Desert by piping fresh water from the mouth of the Amazon. The patent also suggests an alternative to the Channel Tunnel between England and France. Both use a semi-buoyant tube submerged 200 feet below the sea surface.

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THANK YOU