Intellectual Property Rights

…. A General Introduction

Professor Prabuddha Ganguli

CEO
“VISION-IPR”
201 Sunview Heights
262 Sher-e-Punjab, Andheri East
Mumbai 400 093
pgang@mtnl.net.in

pganguli©2000-2008
pganguli©2000-2008
 Key issue : Ownership of
Knowledge

versus

IPR plays a decisive role

pganguli©2001 pganguli©2000-2008
Consumption Daily 6/29/2004
Beijing – 50,000 Counterfeit LV Bags
Destroyed
The local Technical Supervision Bureau (TSB) in
Beijing destroyed 50,000 Louis Vuitton bags, worth
RMB5 million. LV’s agent in China witnessed the
destruction of the seized bags.
China Intellectual Property News 7/3/2004
Guangdong – Biggest Trademark Infringing Case
Guangdong AIC recently released information on a
trademark infringing case with an estimated total
value of RMB11 million. The infringing products seized
were mainly sportswear labeled “NIKE,” “Adidas,” and
other brands. Some of the infringing shoes included
“NIKE” designs that are scheduled to be launched in
pganguli©2000-2008
 Yves Saint Laurent vs. Ralph Lauren

In 1970, the French designer Yves Saint Laurent (YSL) created and
successfully marketed a long black sleeveless tuxedo-like evening
dress, which the YSL fashion house reintroduced in their 1992
collection.
Ralph Lauren was selling a similar version of the dress in their 1992
collection.
YSL brought suit against Ralph Lauren under copyright infringement,
design infringement and unfair competition.

May 1994:
The court in Paris decided in favor of YSL
Court concluded that YSL owned the 1970 dress design under the law
on Designs and Models and also considered the dress design an
original copyrighted creation.
YSL was awarded damages of FFr 2 million. [50% for copyright
infringement and 50% for damages resulting from unfair
competition. pganguli©2000-2008
 Balancing of Interests

Private Public
Producer Consumer
Industrialized Economies Developing Economies
Monopoly Competition
“Private Interest Must Yield Public Good”
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Controlling Counterfeiting

…….A never ending challenge

pganguli©2000-2008
 gh t
Geogra Copyri
p hical In
dicatio
ns
Design Regi
stration

rk Pate
em a n t
Trad
ecr et
d eS
Tra

pganguli©2000-2008
 LAYOUT DESIGNS FOR
INTEGRATED CIRCUITS TRA
DEM
SER ARK
VIC
EM
ARK
S
T S
R E
EC
COPYRIGHT S
DE
RA ANTI COMPETITIVE
S T PRACTICES IN
O L CONTRACTUAL
TO
IP R LICENSES
pganguli©2000-2008
 STRATEGIC ELEMENTS
■
PROTECTION OFFERED BY EACH ONE OF THE TOOLS

■
PERIOD OF VALIDITY

■
GEOGRAPHICAL LIMITS

■
ENFORCEMENT FEATURES

■
LICENSING ISSUES, BENEFIT SHARING

■
OTHER LEGAL IMPLICATIONS

A clear appreciation of these…. Imperative for all IPR players

pganguli©1998 pganguli©2000-2008
 Gillette
• Manufacturers of male and female grooming
products, writing instruments and correction
products, tooth brushes, oral care appliances,
and alkaline batteries.
• Products include blades, razors, shaving
preparations and hair epilation devices
among others.
• Internationally recognised brand names such as BRAUN,
PARKER PEN, WATERMAN, LIQUID PAPER, ORAL
B, DURACEL….. Flagship Brand .. GILLETTE
• Products protected and nurtured by Trademarks in
various parts of the world

pganguli©2000-2008
 Gillette
Gillette Company Asset Values (US $ million)

Value ($ Total (%)

m)

Working Capital 2,850 4.9

Fixed/Other Assets 5,131 8.8
Intangible Assets 5,854 10.0
(est. 10% of TIC)
Intellectual Property 44,700 76.3

Total Invested Capital 58,535 100.0

(TIC)
Information source: PRICEWATERHOUSE COOPERS publication
“ Valuation of Intellectual Property”
pganguli©2000-2008
Managing IPR … A framework

pganguli©2000-2008
 Options available to the IPR
Holder
• Exploit the IPR himself
• License the IPR to another party (s) with mutually
negotiated benefit sharing arrangements
• Cross License for mutually independent working
and / or collaborative working
• Assign the IPR to another party (s) for an
appropriate return
• Barter rights
• Establish a franchise system involving other parties
• Take action against those who infringe his rights
• Let the rights selectively lapse in certain countries
pganguli©2000-2008
 Realising Value

• Valuation of Knowledge
and IPR
• Licensing of IPR
• IPR Insurance
• IPR as a collateral

pganguli©2000-2008
How does one realise the value of
one’s intellectual assets
A structured audit is necessary

pganguli©2000-2008
Hello Kitty – New Jewellery Collection by Kimora
Lee Simmons and Judith Leiber
Hello Kitty's parent company, Sanrio, signed a licensing deal with powerhouses Judith
Leiber and Kimora Lee Simmons to produce a luxury accessory collection of the girls'
icon. »

Calvin Klein Expands Bridge Business

Calvin Klein Inc. announced last week it has signed a licensing deal with an affiliate of
Italian manufacturer Fingen SpA to reintroduce CK Calvin Klein clothing line and
accessories in Europe and the Middle East starting next spring.

PHL Plans Worldwide Expansion of Porsche De

German luxury automaker Porsche and its licensing and trading company Porsche
Lizenz- und Handelsgesellschaft mbH & Co KG (PLH) intend to push the worldwide
expansion of the Porsche Design brand and to introduce a new store concept along with
new licenses, including men’s sportswear line, reports fibre2fashion.com. »
Expectations High for Beyonce`s
Ready-to-Wear Line »
International film and recording star, Beyonce Knowles, today announces a joint venture with Arthur and
Jason Rabin. This partnership will provide the infrastructure for licensing and brand management to the
new Beyonce fashion label. In turn, Beyonce Source: fashiongates.com pganguli©2000-2008
 IPR Strategies
• Effective use of International Conventions
• Strategic options in the statutory provisions
e.g. divisional applications, continuation, and
continuation in part
• Extending life of an invention e.g. Claritin
• Joint IPR
• IPR Leveraging
• IPR Litigation as a strategy

pganguli©2000-2008
 IPR Portfolio Building

Seed, nurture, cultivate and harvest

Inventions to create the Present,
Immediate Future and distant future
portfolios

Measuring IP Performance

pganguli©2000-2008
Beware !!!!

pganguli©2000-2008
■
Institutional IPR Policy
■
Integrating IPR into business strategy &
project management
■
Effective Use of IPR information
■
Identifying areas of possible infringements
■
Licensing strategy
■
Policing of institutional IP assets
■
Litigation strategy
■
IPR audit
■
Effective utilisation of International
Conventions. pganguli©2000-2008
Building Competitive Edge
Patents and Designs
Registration…… a few
case studies
Professor Prabuddha Ganguli
CEO
“VISION-IPR”
201 Sunview Heights
262 Sher-e-Punjab, Andheri East
Mumbai 400 093
pgang@mtnl.net.in

pganguli©2000-2008
 Anatomy of a Patent
Title, Inventors, Assignees, Date of filing,
Date of Publication, Date of Grant, A,
International Classification, National
Classification Application number, Patent
Number; Abstract

BACKGROUND OF THE INVENTION

Description of the Prior Art

SUMMARY OF THE INVENTION

BRIEF DESCRIPTION OF THE DRAWINGS

DETAILED DESCRIPTION
PREFERRED EMBODIMENTS

Claims
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 ELECTRIC PLAID PRODUCT SPECIFICATIONS!
StitchSwitch™
Is it a computer display or a hand woven Embroidered and Woven
textile? Light Switches
IFM's Patent Pending Electric Plaid TM looks Woven and embroidered
like a beautiful, soft textile artwork, but touch sensors for
changes color like a computer display.
controlling lights or other
electronic devices in the
IFM's Electric Plaid is a unique textile display
technology and design material. It is used by home.
IFM to create hand woven, sensuous individual
artworks, interior design and architectural
surfaces. Electric Plaid combines woven
electronic circuits, color-change inks and drive
electronics, to add TIME AND MOTION to textile
patterns and design. Patterns change color
slowly over time, to give you information or
change the decor of the room. Electric Plaid is
a reflective (it doesn't light up!) color-change
medium. Electric Plaid can be combined with Electric Plaid™ Patent-Pending
IFM's textile sensors, StitchSwitch, to create Color-Change Textile Panels
fully interactive textiles and INTERACTIVE
ARTWORKS artworks

International Fashion Machines. pganguli©2000-2008

 Sewing Machines…A case study on Innovations……
Stitch in time with IPR

A sewing machine is a mechanical (or electrical) device

that joins fabric, using thread, in a manner similar to
manual sewing. Sewing machines make a stitch, called a
sewing-machine stitch, using between one to four stitches.
They include means for gripping, supporting, and
conveying the fabric past the sewing needle to form the
stitch pattern. Most home sewing machines, as with many
industrial machines, use a two thread stitch called the
lockstitch. Some other common machine types are chain
stitch machines and sergers.

Mission: A machine to replicate hand-

pganguli©2000-2008
 Sewing Machines

Altered needles in the form of a fine steel hook

to create a form of chain stitch
1755 ; Charles Fredrick Wiesenthal,
awarded British Patent No. 701 in for a
double pointed needle with an eye at one end
which enabled it to pass through the cloth
by a pair of mechanical fingers and
grasped on the other side by a second pair.
1790; Thomas Saint awarded British Patent No. 1764
which had an overhead arm for the needle and
a form of tensioning system.
1795-1830; various patents awarded for chain stitch
machines of varying types but non satisfactory functioning.
pganguli©2000-2008
 Sewing Machines
1830; A French tailor Thimonnier Barthelemy awarded a French patent
It used a horizontal arm mounted on a vertical reciprocating bar,
the needle-bar projected from the end of the horizontal arm.
The cloth was supported on a hollow, horizontal fixed arm,
with a hole on the topside, which the needle projected through at the
lowest part of its stroke. Inside the arm was a hook, which partly rotated
at each stroke in order to wrap the thread (fed from the bobin onto the hook)
around the needle at each stroke. The needle then carried the thread back
through the cloth with the upward motion of its stroke.
This formed the chain stitch, which held the cloth together.
The machine was powered by means of a foot pedal with the stitch
formed on the top of the cloth, not the bottom as with
most other prior chain stitch machine made .

Need felt for lock-stitch for strength. A lock stitch is created by two separate
threads interlocking through the two layers of fabric,
resulting in a stitch, which looks the same from both sides of the fabric.
pganguli©2000-2008
 Sewing Machines

1834; Walter Hunt’s developed a machine that used

an eye-pointed needle (with the eye and the point on
the same end) carrying the upper thread, and a shuttle
carrying the lower thread. The curved needle moved
through the fabric horizontally, leaving the loop as it
withdrew.
The shuttle passed through the loop, interlocking the thread.
The feed let the machine down – requiring the machine
to be stopped frequently to set up again. No patents filed.
1846; Elias Howe patented a machine that used a similar
method to Hunt's, except the fabric was held vertically.
The major improvement involved a groove in the needle
running away from the point, starting from the eye
pganguli©2000-2008
 Sewing Machines

Elias Howe did not succeed in finding investors in England

and returned to the USA. He discovered that his invention
was being infringed. He filed patent infringement suits against
the infringers and eventually won his case in 1854 and was
awarded the right to claim royalties from the manufacturers
using ideas covered in his patent.

1851; American Patent to Isaac Merritt Singer’s machine

That combined elements of Thimonnier’s, Hunts and Howe’s
machines and used a flying shuttle instead of a rotary one;
the needle was mounted vertically and included a presser foot
to hold the cloth in place. It had a fixed arm to hold the needle
and included a basic tensioning system.
Howe sued Singer and won the case. Singer was forced to pay a
lump sum for all machines already produced. Singer then took
out a license under Howe’s patent and paid him $15pganguli©2000-2008
per machine.
 Sewing Machines

Allen Wilson had developed a reciprocating shuttle,

which was an improvement over Singer’s and Howe’s.
However, John Bradshaw had patented a similar device
and was threatening to sue.
Wilson then went into partnership with Nathaniel Wheeler to
produce a machine with a rotary hook instead of a shuttle.
Wilson also invented the four-motion feed mechanism
which had a forward, down, back, and up motion,
which drew the cloth through in an even and smooth motion.
1850s more and more companies were being formed
and were trying to sue each other
.

pganguli©2000-2008
 Sewing Machines
1856 The Sewing Machine Combination was formed,
consisting of Singer, Howe, Wheeler and Wilson,
and Grover and Baker.
These four companies pooled their patents,
meaning that all the other manufacturers
had to obtain a license and pay $15 per machine.
This lasted until 1877 when the last patent expired.

1900s; The first electric machines started to appear.

At first these were standard machines with a motor strapp
on the side followed by motor into a casing.
This was followed by computer controlled and use
stepper
. motors or sequential cams
to achieve complex patterns.
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 Bernhardt v. Collezione Europa
Fed. Cir. 2004) (04-1024)

Bernhardt sued low cost furniture dealer Collezione for infringement

of six design patents. The district court, however,
held that several of patents were invalid under 102(b) for prior public use. 
Specifically, the court found that Bernhardt's disclosure of the designs
at a Pre-Market exhibition rendered the patents invalid. 
In addition, the court found that Collezione's products 
did not infringe the patents.
pganguli©2000-2008
 Fryett’s Fabrics Settles Hathi Design Infringement Claim
Against Natural World

Fryett’s Hathi
Natural World’s
Festival Elephant

Tessitura A R Export SRL manufactured for Fryett’s, as exclusive

distributor, a distinctive cushion panel design known as Hathi,
marketed by Fryett’s within its Porter & Stone collection from June
2000. By mid 2002 Fryett’s had sold over 45,000 metres of Hathi.

Natural World then began to sell a similar design marketed as

Festival Elephant at prices which undercut the Hathi product.

Fryett’s flied suit against Natural World alleging infringement of

copyright and seeking an Injunction and damages.
Decision in Favour of Fryett
Payment of £55,000, together with undertakings from Natural World
to withdraw its Festival Elephant cushion and to deliver up all
residual stocks of that design to Fryett’s. pganguli©2000-2008
 Tommy Hilfiger Licensing Inc. vs. Nature Labs
LLC
The US District Court in New York dismissed Tommy Hilfiger Licensing
Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for
dogs, does not infringe on the fashion designer and cologne maker's
trademark.
Nature Labs sells its perfumes in pet and novelty stores,
packaged in batches of three similar bottles,
bearing slogans like "strong enough for a man,
but made for a chihuahua."

The Court ruled that the perfume, called Timmy Holedigger,

could not under any circumstance be confused with Tommy Hilfiger cologne,
nor could it be seen as a competing product trading on the designer's good wil
Besides, Nature Labs LLC, sells numerous other parody fragrances for pets,
including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports)
and Miss Claybone (Liz Claiborne).
The Court observed that the other trademark holders
have accepted the parody and not challenged Nature Lab's Trademarks.

pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
English High Court (02 February, 2001)

Court Decision:
Shirin Guild garments, made as prototypes
for mass-production, and being machine
made garments of a very simple design,
could not be regarded as works of artistic
workmanship or works of art. However,
Shirin Guild's modifications of the design
of the original Gigli sweater was sufficient
for her resulting designs to be original.

pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
contd……..
• Eskander Nabavi had been designing chenille and tweed
sweaters of a wide, square design since early 1991

• September 1991: Shirin Guild met Nabavi to negotiate

production of loose fitting, square peasant style garments
and agreed to let Nabavi produce square style garments
from her design drawings bearing particular resemblance to
a wide sweater designed by the designer Gigli

• Havelock a company produced samples for Nabavi based on

the drawings of Shirin Guild and the Gigli sweater sample
having a width of 100cm and a V-neck in contrast to the
88cm width and crossover V-neck of Guild's design. In due
course a shirt and cardigan of the same square 100cm wide
design of the Havelock sample sweater were also made.

pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
contd……..
• A partnership was formed between Shirin Guild and
Eskander Nabavi along with two other persons with each
partner having a 25 per cent share of profit. There was no
agreement that any copyright or design right originally
owned by Shirin Guild was to become partnership property.
Therefore Shirin Guild remained the sole owner of those
rights.

• Partnership was terminated in August 1992.

• Almost a decade after the partnership was dissolved, Shirin

Guild filed a suit claiming that -
** Eskander Nabavi had copied her designs to set up his
own range of square and wide styles of shirt, sweater and
cardigan, in competition to her.
** Her garment designs were protected by copyright as
works of artistic craftsmanship, or alternately their shape
and configuration was protected by design right.
pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
contd……..

• The key task before the court was :

Whether or not an article was a work of art

was whether the maker had the conscious
purpose of creating a work of art.

pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
contd……..
• Observations by the court :

The samples of the Shirin Guild garments,

made as prototypes for mass-production,
and being machine made garments of a
very simple design, could not be regarded
as works of artistic workmanship or works
of art. However they are examples of new
developments in the fashion world.

pganguli©2000-2008
Shirin Guild vs. Eskandar Ltd and Another
contd……..
• If a sufficient level of independent skill and labour
was used to modify an existing design, an original
design would result for copyright and design
purposes.

• Shirin Guild's modifications of the design of the

original Gigli sweater was sufficient for her
resulting designs to be original. Though other
designs featuring the wide look existed in the
relevant design field of ladies luxury fashion, the
essential features of Shirin Guild's designs were
not commonplace and therefore, she succeeded in
her claim of design right infringement.

pganguli©2000-2008
 CONTESSA FOOD PRODUCTS, INC. v CONAGRA,
United States Court of Appeals for the Federal Circuit
01-1157
CONTESSA FOOD PRODUCTS, INC.
(formerly known as ZB Industries Inc.),
Plaintiff-Appellee,
v.
CONAGRA, INC.
(doing business as Singleton Shrimp Company and as
Meridian Products),
MERIDIAN SEAFOOD PRODUCTS, INC.,
and OCEAN DUKE CORPORATION
United States Court of Appeals for the Federal Circuit 01-1157
DECIDED: March 13, 2002
pganguli©2000-2008
U.S. Design Patent No. 404,612 pganguli©2000-2008
On remand, the district court is instructed to consider features, in
addition to the arrangement of the shrimp on the top of the tray,
regarding the underside of each of the accused products visible after the
packaging is removed. The overall features of the top, side and underside
of the accused products must be compared with the patented design as a
whole as depicted in all of the drawing figures to determine
infringement.

Because the district court did not fully consider the underside of the tray
illustrated in Figure 4 of the `612 patent when applying the "ordinary
observer" test, we vacate the decision granting summary judgment of
infringement and remand for further proceedings consistent herewith.

pganguli©2000-2008
Creating Institutional IPR Policies

Professor Prabuddha Ganguli

CEO
“VISION-IPR”
201 Sunview Heights
262 Sher-e-Punjab, Andheri East
Mumbai 400 093
pgang@mtnl.net.in

pganguli©2000-2008
pganguli©2000-2008
IPR Enabled Knowledge Incubation and Hi to L
o w Risk
Wealth Realisation
Product Lifecycle
Competitive sustenance
Realisable Value of IP to Potential Value of IP

Market acceptability
IPR
Management Marketable Products/Processes
Alignment with market
Idea into product/process
Ideas Actionable
Ideas demonstrable
Idea Feasibility
Freezing of options
Position in the protected Value addition
Technology grid to Organisation
idea stage ..Technology & Market
development

p.ganguli©2003
time pganguli©2000-2008
 ●
Business Opportunities
●
Technology Options
( mapping exercise )
●
Strategic Options

CONCEPTS
●
Working through the
●
IP grid
●
Patents & other IPR
Filings/Registrations
●
Strategy for
Foreign Filings
●
PROCESS

Licensing Options
●
Joint Developments
INNOVATION

●
Fit in IPR Portfolio
●
Marketing tieups
OUTPUT
Managing Intellectual Property

●
Product Lifecycle
●
Managing IPR Portfolio
●
Monitoring IPR
●
Policing IPR
●
Enforcing IPR
Record Maintenance & Updating IPR Information
MARKET

pganguli©2000-2008
 What do we do ?

• Formulate Institutional IPR Policy

• Institute Information classification policy
• How do you sign MOUs
• Make all employees aware of the IPR and information
classification policies
• Users at unit level made aware of issues & responsibilities.
Manual of best practices.
• Set up patent information service
• Structured annual training and awareness workshops
• Protection … establish a continuous process

pganguli©2000-2008
 The IP Policy Process
• Recognise the Vision and Mission of the
Institute
• What are the various activities your
institution is involved in
• Interaction of the Institution with the
outside world
• Interactions within the institution
• What is the human resource policy the
institute say vis-à-vis benefit sharing
arrangements, etc.

pganguli©2000-2008
 The IP Policy
• Who will sign on behalf of the organisation
• Which will be the team to advise on IPR
issues…. MOUs, protection, etc.
• What will be the channel to get it going on
the floor.
• Who owns what?..
• Documentation?
• Disclosures?
• Who will pay for the protection?
pganguli©2000-2008
 The IP Policy
• When can the Institute Name or Logo be used?
• Faculty participating in courses outside… Can
Institution name be used?
• What will be the mechanism to identify
Institutional IPR infringements or activities in the
market that are damaging to the Institute’s
reputation? Who will initiate actions?

pganguli©2000-2008
Motivation for IP Protection and
Management
• IPR Management helps to integrate the
institution’s innovation process with a wide
range of R&D partnerships
• Institutional IPR encourages partnership with
other developers especially with SMEs in the
innovation supply chain.
• Optimal use of extra-institutional knowledge.
Avoid duplication and manage funs for R&D
effectively

pganguli©2000-2008
What the Institutional IP Policy
Should Lead to…..
• Achieving the VISION and MISSION of the
Institution.
• Stimulation of creativity and inventiveness through
Framework for Competence and Knowledge
Building
• Rationalisation of investment in human and capital
resources. Avoidance of duplication of R&D
• Optimal use of “Extra-institutional” knowledge
• Integration of the Institutional Innovation Process
with a wide range of R&D and Business Partnerships
pganguli©2000-2008
©VISION-IPR 2002
 What the Institutional IP Policy
Should Lead to…..
• Timely Protection and Management of Institutional
Knowledge Assets…
• Encouragement of partnership with other developers
especially with SMEs in the Innovation Supply
Chain..
• Earnings from innovations to pay for further research
and acquiring other technologies ( e.g. licensing and
cross-licensing)
• Recognition to inventors and enhancement of ethical
standards in the Institution
• Transparent Benefit Sharing from IP earnings .
pganguli©2000-2008
 What the Institutional IP Policy
Should Lead to…..
• Creating and retaining leadership in the Knowledge
Market.
• Academic Freedom to operate in a global
environment.
• Guarding the Institution from taking on undue
Financial and Legal liabilities.
• Effective enforcement of Institutions IPRs
• Enhancement of Institutional Image
• Assuring Long Term Growth of the Institution .

pganguli©2000-2008
Developing a Business Oriented
Curriculum and course Material
for IPR for NIFT

Professor Prabuddha Ganguli

CEO
“VISION-IPR”
103 B SENATE, Lokhandwala Township,
Akurli Road, Kandivli East, Mumbai 400101
Tel: 91-22-28873766
e-mail: ramugang@vsnl.com

pganguli©2000-2008
 Key points to consider

• NIFT’s Mission
• Sensitising Students to face a fierce global
competitive environment
• Creating Frameworks for NIFT Students and
Faculty to derive optimal value for their creations
• Effectively networking with commercial
organisations
• Upgrading professional skills in Indian Industry
• Creating new career options in a niche area of
global significance.
pganguli©2000-2008
pganguli©2000-2008
 IPR Modules

• IPR… an imperative business tools especially in

the context of international trade practices, norms,
treaties, agreements, etc.
• Introduction to Basic IPR Tools…. Driven by case
studies derived from the global fashion industry
• Searching for IPR Information
• Significance of Documentation, Formal Contracts,
Structuring of Negotiations, Pitfalls to avoid and
essentials to take care of.
• Institutionalising the IPR Process.

pganguli©2000-2008