Category Archives: high-tech-patent-commercialisation

Blogs in this Category would include all Patent Commercialisation in Hi-Tech Technology Domain with focus on IIPRD’s analysis and key take away strategies.

INVENTORS, ALL TECHNOLOGIES AREN’T WORTH BILLIONS

Working in the IP/Technology Commercialization and Out-Licensing domain makes you assess and evaluate commercial viability of numerous IP backed inventions across technology domains.  Apart from learning about and assessing new technologies, we also tend to learn quite of lot about Inventors mindset, specifically about their perspective of their own inventions. This article relates to our experiences in dealing with some of such Inventors and/or Applicants and making a humble submission to them to analyze their own work, not only from a technology point of view, but more important from a commercial viability and marketability perspective before initiating their research and investing in protecting IP relating thereto. It would be appreciated that the below comments are not being generalized in any manner and that these are only Author’s views based on his own interactions with Clients.

We understand from our Associates in Israel and some European Countries including Denmark, that there are hardly any patents filed in these countries without proper due-diligence on the future return on investment on the patent and without some of kind tie-up already having being done for commercialization or Out-Licensing of the technology. In India, a land where there exists a mandatory requirement for submission of details on working of the invention by the Patentee, where there are numerous agencies supporting technology transfer and commercialization, there exists no such practice, and in fact far from out, to my knowledge there wont be even .01% of patents being granted to Indian Applicants, that would ever see light of the day.

Although, a partial reason for such a low rate of successful commercialization and Out-Licensing could be the mentality of Indian Corporates not to invest in new technologies, not to consider innovation as an integral part of a company, not appreciating Intellectual Properties and enforceable rights given thereby, to have a practice of designing around technologies to avoid infringement, to have an impression of the Courts being slow in granting damages, among many other reasons.  In addition, sections such as Sec. 111 (1) of the Indian Patent Act, which state that “In suit for infringement of a patent, damages or account of profits shall not be granted against a defendant who proves that at the date of infringement he was not aware and had no reasonable grounds for believing that the patent existed.”, really boost up the confidence of Legal Entities not to In-license or buys strong IP’s as reports such as freedom to operate can come to rescue. Having personally seen literal infringers get away from any civil damages under the protection of this clause and the plaintiff’s merely getting injunction granted to them, reinforces this thought of how successful Licensing Efforts can be in India. Anyhow, this article does not even pertain to Licensees or hurdles present in the systems per se, but rather relates to Licensors and their approach towards commercialization.

Hundreds of patent applications across technology domains are filed every month, with a number of them being from Individual Inventors and Research Institutes. Having said so, as individual inventors and R&D entities, most of the times have limited resources for commercialization of their technologies, including but not limited to manufacturing and marketing capabilities, they look out to Out-License or sell the patent right either before or after the grant of the patent. Further, as even Licensing needs dedicated efforts, strong potential licensee analysis, marketing strengths, and convincing capabilities, a number of times Licensing firms are chosen to represent such patented technologies and approach appropriate licensees and understand their interest levels in the technology before proceeding for discussions on terms and conditions for licenses and valuing the technology for the same. As most of the times, such Licensing efforts are taken on success basis, it becomes crucial for the licensing firms to assess and evaluate commercial strength of the patent and the technology protected there through before committing to proceed with the Out-Licensing process.

The challenge however is to convince the patentees as to why this commercial evaluation is an important step in the Out-Licensing process and why it lays down the basis framework for all future efforts through an understanding of the market, the in-licensing behavior of the market, the major players involved, which of these players are approachable based on their background, the costing involved in substitute technologies, strength of patent, among many other parameters. Unfortunately, as we have experienced, its most of the times a one way thinking strategy, wherein the Patentees, believe their technology to be a superior one and that technology is all what counts. As if a sense of how the market and existing products behave would not matter. As if a sense of whether the patent, as granted, is strong enough to be enforceable does not matter. As if all potential licensees are eagerly waiting to consider such technologies for possible in-licensing opportunity. As if the geography in which the patent is granted and intended to be commercialized does not play a role. Most importantly, as if the need for the technology in the concerned domain can not be refuted and that the market is eagerly waiting for the technology.

I strongly believe that it is high time that technology commercialization, as a field of IP, be looked upon from a matured perspective, in which novelty and patentability of technology is only one parameter to be considered while assessing of the chances of successful commercialization. A host of other attributes play an even more important role during commercial evaluation, some of which have been very briefly discussed below with respect of certain examples. These examples are mere illustrations and no other interpretations should be drawn from the analysis:

The first technology relates to a method and system for administering life cycle of Health insurance policy holder, in particularly a web-based solution for managing complete life cycle of Health insurance policy holder. More specifically, the disclosure relates to a web based system that is capable of managing the entire life cycle of a health insurance policy holder, right from the time he/she subscribes to a policy till the final settlement of insurance claims. The system and method described in the said patent application particularly discloses various interfaces and modules to connect the policy holder to the different stakeholders in his treatment, specially, the Doctors, the Drug Store Attendant, the Lab Assistant, the Nurses, and the Surveyor at the Insurance Company etc.

The second technology relates to a topical formulation for treatment of Warts comprising of two carrier systems, with one being a soluble sulfide and the other being a mixture of two drugs in an oil in water emulsion.

Market Perspective: Under the assumption that the Patent has been granted, it is extremely important to understand the market of the concerned domain and whether the same is receptive to new technologies, especially royalty expecting products/technologies. For instance, in the warts application, the existing treatments available for warts include Chemical Destruction, Cryosurgery, Surgical removal method, and prescription medications using agents including Pondophyllin, Cantharidin, Bleomycin, Dinitrochlorobenzene, and Fluorouracil. The proposed formulation, on the other hand, is a topical formulation, based on sulphides alkali metals, which inherently have stability and toxicity issues. Further, sulphides based products, are typically not OTC products and hence have to be prescribed by Doctors, which is non-preferred route of curing the warts by the patients. The market scenario also tells us that companies such as GSK, Merck, Dr. Reddy’s, and Cipla are the major players in the domain, and being a skin disorder product, which is already heavily populated, most of the focus of these companies lies in other medical indications including cervical cancer etc. Further, with a flood of salicylic acid based and non salicylic acid based products in the market, there seems to be little scope for companies to invest in such products. This is more in cases where there is limited clinical data available to the Potential In-Licensees.

Existing Technology Perspective: As was discussed above, with respect to the warts technology, a snapshot of products being right now marketed was analyzed and over 45 products including Duofilm, Salicure-17, Shaloxy-FW, Salicylix-SF, and Dr. Scholl’s were found out in the same domain. Being a heavily populated domain, introduction of a new product, which combines an active ingredient with a pain reliever, which also is quite known, would have a hard time creating excitement.

Patent Strength/Enforceability Perspective: Being granted a patent is completely different from being granted a strong and enforceable patent. A number of times, we encounter patents which good and bypass the market and product level analyze, but are drafted and protected so narrowly that instead of in-licensing, there of more chances of the potential licensee designing around the technology. Taking for instance, the first independent claim of the web-based health insurance software, which claims a

“A web based method for managing complete life cycle of health insurance policy
holder, said method comprising acts of:

a.        registering subscriber to policy…;

b.        prescribing clinical tests for the insured person …;

c.        performing the prescribed tests and updating the test results …;

d.        commencing the treatment by admitting the patient based on the test results …;

e.        generating discharge summary upon completion of the treatment …;

f.         forwarding claim documents along with discharge summary to the surveyor…”

Even if we assume that the above subject matter is patentable under S. 3(k) of the Indian Patent Act and also overcomes the novelty and obviousness issues, with the above exemplary claim being so narrowly drafted, enforceability would always be questionable and significantly hamper efforts of Out-Licensing the patent rights.

Potential Licensees Perspective: There are often cases in which the technology has strong market application and that there does exist a need for such a technology to improve the manufacturing process. However, even under such circumstances, the out-licensing efforts might not go through because of the target potential licensees that might be involved. For instance, a wire mesh machine that allows a continuous strip being used for making a welded metal lattice is a product that would do very well in EP and US geographies but Indian companies, most of them being unorganized in this domain, would be reluctant to in-license or buy patent rights of such a machine due to parameters such as cost involved, ease of replication, among others.

Supporting Data/Prototype/Clinical Data Perspective: Another important parameter used for evaluating products/technologies, especially in the pharmaceutical domain, is the level to which the Clinical tests have been done. With most in-licensees, particularly in India, looking to evaluate in-licensing proposals based on prototypes being developed and the clinical data available, it becomes integral to provide as much supporting data as is possible along with the IP details being given in the commercialization proposal.

It would be appreciated that above mentioned parameters are only an exemplary set, and many other attributes such as patent validity, extent of estimated effort and time involved in the process of commercialization, expectations of upfront and royalty payments, research being carried out with other competing technology companies, other available in-licensing opportunities, among many others play an equally important role.

I therefore believe that the Patentees should appreciate that there is more to a successful technology transfer than merely having a patent in hand and a superior technology in mind. Many other considerations play a role in determining whether the patented product would be acceptable in the market and these are the considerations that need to be analyzed before even initializing the R&D process so that there is little resentment in case after the complete R&D and patent process, one realizes that the applicability and commercial viability of the concerned subject matter is limited.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.

INTERNATIONAL PATENT PROTECTION IN ELECTRONICS & IT (SIP-EIT) SCHEME BY DIT

It is enriching to hear and read so much of focus going these days into Innovation at Grass Root and Startup level. With initiatives being taken at all levels by Stakeholders including FICCI, MSME, DIT, and NASSCOM, the next wave of the so called Start-up innovation can really be envisioned. As has correctly been stated by the article of Vivek Wadhwa of 14’th December ‘2010, a new breed of Indian Start-ups now is developing high-value products based on Intellectual Property. Having out-licensed some of such out-of-box telecom and network security products, I couldn’t have agreed more.

This article essentially relates to about a 2 year old but not so actively participated scheme that DIT has for Indian Information and Communication Technologies (ICT) based Start-ups and SME’s. Having worked with many Indian Start ups in the domain of Software and Electronic technologies, I have regularly seen unfunded Corporates turning down potential IP’s which could have had significant valuations when put across to the Investors. This is more so the case when the Applicants avoid filing the PCT and National Phase Applications outside India knowing full well that the real valuation of an IP at the present moment is only considered as a value proposition if its protected in US and EP.

The proposed scheme is called the SIP-EIT (Support International Patent Protection in Electronics and IT), wherein the scheme reimburses the costs incurred by SMEs and Technology Start-Up units in filing International Patent Applications (in the field of Electronics & ICT) for their indigenous inventions.

The highlights are as follows:

1. Registered MSME, DSIR Certified companies, and Technology Incubation enterprises are eligible to apply for the scheme.

2. The funds are given as a grant – i.e., no refunds expected.

3. The Applicants are free to hire any Attorneys whose fees are included in the schedume and would be refunded subject to the below mentioned maximum limit.

4. 50% of all expenses, including lawyers fees, is reimbursed by the DIT. However, this “50%” must not exceed Rs. 15 Lakhs

5. Along with the registration and financial details, the Applicant needs to provide a prior art search report indicating the chance of patentability of  the invention, product brochure, and Official copy of Indian Patent Application Filing.

6. The Start-up/SME need not be an ICT company, it can be a Pharmaceutical or any othr company having an ICT product, apparatus and/or process.

The details of the scheme are available here. We believe this to be an excellent support that if utilized properly can yield effective Licensing and Product Commercialization opportunities for the company.

The only caveat in my perspective, at the moment, would be the appropriateness in grant of ICT based Patents in India and their enforceability in the Court of Law keeping the Section 3(k) in mind. We have already seen examples of Computer implemented patents being granted in India of whose corresponding Patents have been rejected by the EPO and other geographies which have tests based on technical effect and tangible results. Therefore, keeping in consideration the inconsistency of patents being granted based on the technical effect bar of the Indian Patent Office, probably its high time that objective tests be set to ensure reliability in the outcome of the patentability to produce defendable and enforceable ICT patents.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.

Hi-tech Patent Licensing Trends

Ever since Software Patents have got easier to get a grant for, protection of computer readable medium claims on a storable media have enforced the Intellectual Property Rights to a much higher level that a software company can have when compared with the counterpart System and Method claims. Although most countries, unlike US, are still opposing in great deal the grant of Software patents, practices in US and shipping of software components from US to the rest of the world poses lack of clarity on the rights of the companies using such a piece of code. Such software patentability issues are also gradually approaching the European Countries with certain courts giving indications of coming closer to US  Software Patent grant practices.

Our mandate in this study is to understand the global software licensing trends and look at the kind of effects such licensing deals are making on competitors and open source players. We would also try and understand the major attributes and/or pointers that motivate players to enter into the strategic licensing with complementary and/or supplementary players in the market. With no major success stories as yet in India in the recent past, our focus would be on recent global patent licensing agreements:

Microsoft and Amazon.com Patent Agreement

“Let only the Mammoths survive?”

On Feb. 22, 2010 Microsoft announced its signing of a patent cross-license agreement with Amazon. The agreement focused on allowing each stakeholder in accessing the other’s patent portfolio thereby covering a broad range of products and technology, including coverage for Amazon’s popular e-reading device, Kindle™, which employs both open source and Amazon’s proprietary software components and its use of Linux-based servers. The deal gives both

Companies access to each other’s patent portfolios and from a strategic perspective could well have been an initiative from Amazon to prevent a suit from Microsoft.

The agreement disclosed that Microsoft would be getting patent coverage for Amazon’s Kindle Ereader technology and Amazon’s proprietary software components deployed on Unix servers and that Microsoft would be getting an undisclosed sum of money from Amazon under the  deal, which with quite surety can be said to be for the IP that Microsoft holds for the user interface designs and OS/Non-OS based software components that the company owns.

Such a deal was a win-win for both the parties with access to Amazons technology on Linux-based servers can be used by the companies for furthering their interests, which in case of Microsoft could be to strengthen its working and existing relationship with Novell. Microsoft and Novell signed a high-impact patent agreement in November 2006 to cover their respective products and ensure easy and powerful virtualization of Linux on Windows and Windows on Linux. The agreement ensured Novell’s continued promotion of Linux as the premier platform for core infrastructure and application services and the company’s commitment to the community through leading-edge development projects as well as the continued promotion of Linux in the marketplace. The patent agreement signed by Novell and Microsoft was designed with the principles and obligations of the GPL in mind. Under this agreement, customers of SUSE Linux Enterprise know they have patent protection from Microsoft in connection with their use of SUSE Linux Enterprise, further encouraging the adoption of Linux in the marketplace.

The deal with Amazon and the aspect of taking in-license of Amazon’s improvement components of Linux-based servers therefore ensured that Microsoft made Windows more compliant and user-friendly for Linux Users.

Trendsetting from such Cross Licensing Patent Agreements:

ü      Only large corporations with thousands or tens of thousands of patents are in the position to enter into cross-licensing agreements with their counterparts. Lets go back and analyze all major cross licensing deals including M/S with Panasonic, or M/S with LG, it has always been a story for the biggies.

ü      If cross licensing becomes more prominent and industry wide practice, what happens to individual licenses that SME’s corporates and small players who essentially look out primarily for out-licensing opportunities

ü      There might be more to cross licensing than is made public by companies. The GNU General Public License states that “Finally, every program is threatened constantly by software patents. States should not allow patents to restrict development and use of software on general-purpose computers, but in those that do, we wish to avoid the special danger that patents applied to a free program could make it effectively proprietary.  To prevent this, the GPL assures that patents cannot be used to render the program non-free.” Such clauses along with rights conferred under S. 11 of the license agreement would surely not encourage such cross licensing agreement, and in case parties do intend to make the systems more interoperable, a lot of such cross licensing or access to patent information might be happening between corporates without coming onto the public front. It might well be the case that Microsoft has been going around and doing these patent cross licensing deals with companies under NDA’s and they never see the light of days for years.

ü      What happens if such deals strengthen relationships only among Software Major and they collectively initiate legal suits and create a huge entry barrier for start-up’s or players having more effective products but have defensive IP strategies.

ü      How do we answer the following questions also posted and considered by Nosoftwarepatents.com “IBM now owns around 40,000 patents worldwide. No one, and particularly no SME, ever has the chance to look at all of those and ensure that there is no conflict between one’s products and any of IBM’s patents. So IBM approaches companies and offers them a costly license agreement to the entire patent portfolio. Through those deals, IBM not only squeezes money out of the smaller company but also gets access to sensitive information on the business of the other company. In the spring of 2004, the press started reporting that Microsoft is now doing the same. They have already approached around 100 companies, some of which are European, and they said that open-source companies would also be targeted.”

Microsoft and Tom Tom Patent License Agreement

“Is FOSS Community the next Licensing Target for IP Focused Software Majors”

This story started in February 2009 with Microsoft filing a Patent Infringement Suit against the navigation device maker TomTom. The suit alleged infringing of several of TomTom’s products, including some Linux-based products, on a handful of Microsoft’s patents. With most patents in contention relating to car computing systems and navigation, but were two Patents namely #5,579,517 and #5,758,352 that claimed Microsoft’s FAT32 file system.

From a business perspective, even though denied by Microsoft, this could well have been a step taken by the Redmond based company to enforce its patents against the open source community and have broader ramifications for the Linux platform and for mobile device makers.

Without going into much detail as regards the litigation and restricting to the licensing deal between the parties, Microsoft ensured that, as described by, Eben Moglen—a Columbia University law professor and the chairman of the Software Freedom Law Center, the FAT patents remains as a “proverbial Sword of Damocles hanging over the open source community” and warned that Microsoft could use them to do immense damage to the Linux platform. In March 2009, Tom Tom settled the dispute with Microsoft with the terms of the agreement conforming with TomTom’s obligations under the GPL, the license under which Linux is distributed. TomTom has paid to license Microsoft’s patents, including those covering FAT.

The agreement also enforced TomTom to remove the functionality that is covered under the FAT patents to ensure that the code in TomTom’s Linux kernel can continue to be broadly redistributed downstream without patent encumbrances. TomTom’s agreement with Microsoft also provides a guarantee that M/S will not sue TomTom users in the interim period during which TomTom makes the requisite changes to the FAT code.

Trendsetting from such Patent Agreements subsequent to Patent Litigations:

ü      Such an agreement was a completely different path taken by the licensor (M/S) when compared with the earlier mentioned huge cross licensing agreements being done with Novell and Amazon. Is a the size and scope of the party that differentiates the manner in which a litigation and post litigation licensing agreement would be drafted and agreed upon by the parties

ü      Not allowing FAT systems to be a part of the navigation devices of TomTom was such as an aspect of the agreement, which was completely different from how the agreement was devised and written down with Novell, wherein the licensing agreement with Novell was much more collaborative and technology sharing rather than prohibiting parties from using IP’s, which was evident in this case.

ü      The major trendsetting in the present case was the manner in which software development might start reacting to the FOSS community. Even though M/S is giving an all together different perspective by stating that lawsuit represents an isolated issue and that the company does not intend to broadly sue Linux users, the underlying intention might well be to identify all potential open source development companies, study their product development/functionality specification details, and to then identify potential infringement areas.

Fractus and Motorola sign Global Patent Licensing Deal

“IP Brokerage Firms do Matter”

April 7, 2010, Fractus S.A. of Barcelona, Spain announced that it has entered into a non-exclusive, worldwide patent license agreement with Motorola, Inc. The agreement includes a license under all of Fractus’ patents related to internal antennas and covers the sale of all Motorola products. More importantly, IPotential, LLC served as broker for Fractus in the negotiation of this license agreement.

A quick search at USPTO reveals that Fractus at the present moment has 41 Granted and 20 Published Patents in antenna domain (multilevel, multi-band etc) and have claimed directed towards both communication devices and antennas. The point to make is the manner in which relatively smaller companies when compared with telecommunication giants like Motorola when guided properly are able to license the technology in the anticipated manner and at attractive valuations.

Subsequent to the deal, in May 2010, the licensor filed a patent infringement case against ten cell phone manufacturers in the Eastern District of Texas, Tyler Division, Case No. 6:09-cv-203.

With not many details available on the commercials of the deal between the companies, it surely has some key takeaways for us:

ü      Fractus is a small but an early pioneer in developing internal antennas for cellular phones and other industries. Founded in 1999, and along with being immensely innovative in the domain of antennas for multi-band cell phones, remains an active supplier of antennas and has shipped millions of antennas worldwide. The company for its innovative work has been named a 2005 Davos World Economic Forum Technology Pioneer and one of Red Herring’s top innovative companies for 2006. It has also won the 2004 Frost & Sullivan award for technological innovation and the 2007 Elektra European Electronics Industry R&D Award. The point to take home is for a focused yet small Indian and/or International Player on the strategy. It could well have been the case that the deal with Motorola majorly happened only because the company needed funds for suing other major companies in the concerned domain.

ü      The second takeaway is the alliance with an IP Licensing and Commercialization partner who understands not only the industry operations and technologies in detail but also the manner in which licensing negotiations need to be held and potential licensees be approached. In the above mentioned case, IPotential LLC who partnered with the licensor, was a technology industry’s leading provider of complete intellectual property (IP) strategy and patent monetization services and has expertise in both patent sales and patent licensing.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.  Currently, He is Managing Patent Licensing Issues in the Hi-tech domain and some of his success stories can be found at http://iiprd.com/technologies.htm.