On 26th June, Nasscom organised an intellectual property (IP) awareness workshop in Bangalore for software product companies (including start-ups), aimed at covering the following:
- What is IP?
- Types of intellectual property rights (IPRs).
- What are the benefits of protecting IP?
- How to identify IP assets- what can be protected?
- Software patenting in India: How to protect computer related inventions in India (products / services)
- How to transfer IP / license IP.
- Ways to commercialise IP
- Trademark protection for IP
The resource persons for the workshop were Sudeshna Banerjee and Naveen Suriya, Partners at the boutique IP law firm, K&S Partners. The workshop saw close to 20 participants from various tech companies.
The first part of the workshop was taken by Naveen and focused on the basics of IP, and software patenting. Some of the topics which Naveen discussed were meaning of IP, types of IP (geographical indications, designs, copyright, trademark, patents, trade secrets, plant varieties etc.), the patentability criteria (novelty, non-obviousness and industrial application), freedom to operate and advantages of filing through Patent Co-operation Treaty (PCT).
Naveen highlighted that many a times, inventors decide not to file for patents on their inventions as they feel that the invention may be ‘obvious’ and hence not patentable. Naveen cited examples of various inventions such as a spark plug with a coating of fluorine oil and a dual use generator and shock absorber system to demonstrate that simplicity does not mean that the invention is necessarily obvious.
The discussion on software patenting was of particular interest to the audience, as the law on patentability of software in India lacks clarity. Naveen clarified that while section 3(k) of the Indian Patents Act, 1970 prohibits computer programmes per se from patentability, software is patentable under Indian patent law if the software satisfies the following criteria:
- The patent applicant shows hardware interaction with the software that is intended to be patented
- The software has economic significance
- The software results in a technical effect i.e. the software solves a technical problem (the technical effect approach is well established in Europe)
Naveen also discussed freedom to operate (FTO) analysis, a best practice which companies are advised to follow to reduce the probability of their patents being challenged.
The last part of Naveen’s presentation focused on filing for patents in India and in other jurisdictions such as foreign filing licence, filing under PCT, and a patent application made under the Paris Convention. In India, start-ups are eligible to apply for expedited examination of their patent application wherein patents are granted within one year from the date of filing the patent application.
Sudeshna’s presentation focused on trademark protection to protect a company’s brand. The presentation began with a discussion on the features of trademark law and the various types of marks that may be protected as trademarks (word marks, logos, trade dress, slogans, taglines) including non-traditional marks (shapes and sound marks). Next, Sudeshna discussed the trade mark application process including situations in which the trademark registration is opposed.
An important point which Sudeshna made was that when going for trademark registration, it is better to not register a trademark under an entire class of products/services as given in the Fourth Schedule to Trade Marks Rules, 2002; by registering one’s trademark only for specific goods/services, one can avoid the risk of cancellation/invalidation of the trademark due to non-use.
Next, she discussed remedies for trademark infringement such as civil seizure of infringing goods and criminal raids. Sudeshna ended with IP protection tips and strategy for trademark holders. Some of these are:
- Cease and desist notices to infringers
- Details of newspaper/magazine when the trademark was first advertised
- Record of unsolicited media publicity about a company’s brand
- Constant vigil- market surveys, Google searches to detect whether a third party is using a similar or identical mark