Prometheus Patent Services was pleased to be one of the domestic partners of the International IP Skills Summit, 2018 that was held on June 27-28 at Hotel Marriott, Hyderabad. The two-day summit saw participation from representatives across different patent offices viz. India, Singapore, EPO, ARIPO; IP counsels and IPR Heads from multinational conglomerates viz. WIPRO, IBM, TATA, Samsung, GE and Pharma giants viz. Biocon, Dr. Reddy’s Labs, Sun Pharma, Mylan Labs, Amneal Pharma; Universities; IP firms from across the world and other stakeholders. The panel discussions and presentations covered diverse IP topics with case studies on IP management, International IP filings, patent analytics including AI based patent searches, IP litigation, careers for IP professionals etc.
Dr. Usharani was one of the panelists on the final panel that discussed, “How R&D and IP Departments can implement proactive strategies to achieve business goals and objectives?” The other panelists were Dr. Poonam Raghuvanshi from Dr. Reddy’s Labs, Rosena L. Nhlabatsi from Qatar Foundation, Mr. Raghu Chinagudabha and Mr. Ramesh Kuchibhatla from Microsoft, Dr. Venkatakrishnan Thengarai from SABIC, and Dr. Ramanathan Sankaran, an independent IP consultant. The panel was chaired by Dr. Anatole F Krattiger from Prisma Innovations LLC, Switzerland who previously served as the Director of the Global Challenges Division at the WIPO.
Under the stewardship of Dr. Anatole, it turned out to be an engaging discussion where topics such as IP strategies for startups, IP awareness for researchers, balancing public interest vs. innovator’s rights, protecting innovation in developed vs. emerging markets, what drives R&D from an IP perspective, IP strategies across different jurisdictions, how to maximize licensing and minimize litigation, collaboration between R&D and IP Departments were discussed.
Dr. Usharani discussed on strategies for a product with huge global market potential, on whether the innovators should immediately go ahead and file applications in different jurisdictions. Excerpts from her discussion: “One of our clients wanted to patent a formulation product with improved stability. This was a special formulation which increases the bioavailability of the drug in a consistent manner and it had a stability of almost one year at room temperature unlike the existing prior art formulations which barely had a couple of weeks stability. This was clearly meant to be a blockbuster invention for the company with a global market potential and they planned to file patent applications in at least a dozen jurisdictions. Now they had an option of filing immediately in all these countries or file an initial application in India to secure a priority date and then follow the Paris Convention route or the PCT route. Definitely the first option of filing in all jurisdictions at the same time is not a good one as that would be complicated and costly. The Paris convention gives 12 months extra time whereas the PCT convention gives almost 30 months extra time from the priority date for filing in different jurisdictions. Here, they filed a priority application in India after which they started production and sales of the product. Then they pursued the PCT route that gave them extra time to meet the huge costs they would incur in each country and also to do some market research and weigh their options before entering into the national phase in the member countries. Also, the international search report of the PCT consolidated the inventive aspect of the product which helped them in seeking funds for processing the patent application. Based on the PCT search report and the written opinion we were ready with the strategy for claim amendments when the product entered the national phase in the member countries.”
She further discussed on the options before fund-crunched Indian startups for getting global protection for their core inventions and ways to strengthen their company position. Excerpts from that discussion: “Being a core invention, it is better that the startups seek patent protection in key geographical regions provided they have the necessary funds. In India, there are various Government schemes that provide financial support for startups with respect to patent protection. The Central government’s Start-up’s IP protection scheme has provisions where startups can avail the services of IP facilitators without having to pay professional fee. We get clients from Kerala and Karnataka who avail the state Government’s start up schemes that reimburse up to 2 lakhs for granted Indian patents and up to 10 lakhs for granted foreign patents. Indian MSMEs and startups from the field of Electronics and IT can utilize the scheme offered by the Department of Electronics and IT, where they can get almost 15 lakhs or 50% of the filing and prosecution costs for granted Indian or foreign patents reimbursed by the govt. The funding provided by these schemes might not cover the whole cost and this strategy might work only if they have a few key countries in mind and if they mobilise other avenues for funds. An alternative to patent protection in such a scenario is the cost-effective option of protecting the technology as confidential information or trade secret depending on the invention type, say for example, where the product cannot be reverse engineered. There should be strict confidentiality agreements, employee awareness on confidentiality and effective measures for protecting the trade secrets.”
She further highlighted that Prometheus Patent Services protects trade secrets of our clients through in-house patented block chain technology, IP BLOCK, where they are encrypted and time stamped with almost no compromise on confidentiality.
She further discussed how the company can further protect other aspects of the invention and the company logo by means of other IP such as copyrights, design and trademarks for enhancing and strengthening the company’s position.