This article is written by Muskan Khandelwal, pursuing a Diploma in M&A, Institutional Finance, and Investment Laws (PE and VC transactions) from LawSikho. The article has been edited by Zigishu Singh (Associate, LawSikho), and Ruchika Mohapatra (Associate, LawSikho).

This article has been published by Shoronya Banerjee.

Introduction

Intellectual property (IP) is an intangible property created by human intellect. In simple terms, IP is a creation of the mind. Intellectual property rights (IPRs) are the legal rights given to the creator. The commonly known IPs are copyright, trademarks, patents, industrial designs, geographical indicators, etc. Governments all across the world have enacted rules and regulations to ensure that innovations are protected and commercialised. The goal is to ensure that people are motivated to invest in fresh ideas and creations while also protecting them from competitors who just copy them. To put it another way, intellectual property is the single most significant tool for facilitating the market for ideas.

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IP commercialisation transforms an idea or innovation into a product or service which is profitable in nature. The sale of such a product or service is the most prevalent practice used for monetisation of creativity. IPRs play a very significant role in such circumstances. It prevents the illegal exploitation of protected features by the competitors. 

For instance, when a medical company comes up with new medicine, its formula is a result of long-term investment and thus, the company should be able to yield the returns of the investment. It is clear that commercialisation of IP entails more than simply filing applications to safeguard and defend your intellectual property. There are a lot of ways to commercialise IP like assignment, joint ventures, licensing, collaborations, partnerships, etc. We will be exploring all the ways through which monetisation of creativity can be done. 

Initial steps for commercialisation

Step 1 : market analysis 

Analysis of the market where the product or service is to be commercialised marks the commencement of the process of IP commercialisation. The term ‘market’ here refers to the geographical market as well as the product market. The geographical market covers the country or countries in which the IP is to be commercialised whereas the product market covers factors like the demand of the product or service, competitors, similar products, etc. The following factors must be considered:

  • Estimated value of IP,
  • Market’s size,
  • Demand of the product or service,
  • Competitors,
  • Legislative framework of that State, 
  • Potential business partners.

Step 2 : IP audit

The next prudent step is an IP audit. “An intellectual property (IP) audit is a tool for identifying your potential IP assets.” It is a methodical inspection of all the IPRs either owned or used by the company. It includes IPRs which are either obtained from a third party or granted to a third party. This process helps in risk management by assessing the risk and coming up with solutions. The best practices for IP management can be developed and implemented through this review process.

IPs are intangible in nature but play a significant role in a company. There is more to a business than just physical assets. It is important to assess all the intangible assets developed or created by the company since its commencement. This process should cover the following things:

  • Name of the business/company (whether it has been registered as a trademark).
  • Name or style or any other indication that is used by the company to sell its products or services. 
  • Any unique product that the company has developed or invented. (Can be registered as patent.)
  • Any brand-new process or innovative practices which comes under the purview of trade secrets or know-how.
  • Style of packaging or the shape of the products which differentiates it from the other products. (Can be protected by registering it as industrial designs or even without registration, it is protected under copyright.)
  • All the legal documents (protected under copyright laws). It includes contracts, software programs, memorandums etc.
  • Client lists and their personal information and preferences should also be included in IP audit.
  • Advantageous internal policies, compliance procedures, quality assurance policies and internal working practices should be recognised as trade secrets.

This process will help the company to list all the assets of the company and ensure that they are protected and cannot be infringed. After auditing, the company can file for registration for new IPs discovered or renew the old IPs which have expired.

Step 3 : IP valuation

After listing down all the registered and unregistered IPs, the next step is to estimate their value in economic terms. The monetary value of the IPRs is directly proportional to the economic benefits they will provide in the future. It may depend on the following factors:

  • Ability to eliminate the competitors from entering into the market.
  • Usefulness to the owner of the IP either directly or through sale.

There are times when IPs are the most valuable asset of a company. For instance, a bottle of black soft drink is not worth much without the mark Coca Cola®. Thus, it is very crucial to identify and assess the value of IP to understand the true potential of the company. 

There are two methods for the valuation of the IP. The Income method, as the name suggests, depends on the potential cash flow that will be generated whereas the market method compares the IP on the basis of real third-party agreements and calculates a market price. 

Valuation is a complicated procedure that necessitates the use of qualified professionals to assess the assets. The extent to which a business exploits and values its IP Assets is one of the variables influencing its success or failure. Therefore, this is a very important step. Any IP strategy must always balance any prospective short gain against any probable long-term suffering in terms of the business’s strategic objectives.

How to protect IP

Registration of IPRs

Registration is the most important step towards the protection of IP. It protects the owner from any possible future infringements of your IPRs and it also gives IP the legal sanctity it requires for better commercialisation. 

There are different laws and procedures through which patents, trademarks, industrial designs, and copyrights are registered. Meanwhile, registration of all the IPs is compulsory for protection, copyright is an exception. Though for better protection, it is suggested to get it registered. 

1. Patents

Patents are governed by the Patents Act, 1970. It was amended in the year 2010. This Act provides three criteria for an invention which must be actualised for its registration as a patent. They are: –

  • The product or the process must be new and original. 
  • It must bring something new to the table. A mere change to a formerly known technique or process cannot be patented. 
  • It must be capable of industrial application.

Once an IP is patented, it gives the owner the monopoly over it and no one can use it without the owner’s permission.  If it is not patented then it could lead to a huge losses, especially to big companies. Recently, Samsung had to pay Apple an extravagant amount of $120 million over a patent dispute. Thus, registration of a patent is a crucial step. The inventor can file the application for a patent himself or he can appoint a legal representative. The registration procedure is given below:

  • File a patent application on Form-1 and have it assigned a number.
  • For a speedy procedure, a form can be filled out requesting publication. It results in publication of the patent specification within a time period of one month. Whereas without the form, it usually takes upto 18 months.
  • A request for examination has to be filed after which the First Examination Report (FER) is issued by the Patent Office. It should be filed within 48 months from the date of filing. Extra fees can be paid to expedite the process. 
  • If any objections are raised then it must be dealt with within 12 months after the issuance of FER.
  • The patent is granted if the objections are satisfied.
  • Post-Grant opposition can be filed within one year.
  • A patent has a validity of 20 years but it has to be renewed every year after the third year as per Schedule I.

2. Trademark

Trademarks are governed by the Trademark Act, 1999. It was further amended in the year 2010. Trademark is one of the most treasured IPs for a business because of the goodwill and reputation attached to it. Names, logos, slogans, word signature, labels, device (product shape), numerals, or even a combination of colours can be trademarked in India. India follows the federal registration system. The registration procedure is mentioned below:

  • Do a trademark search for a totally unique trademark, national trademark databases that are available online can help in such research.
  • After the research, the next step is to file an application for the registration of the trademark. A fee has to be paid along with the form.
  • The TM mark can be used after receiving the allotment number.
  • The trademark is then sent for Vienna Codification.
  • After the registration of the mark, if there are any clarifications, then the Trademarks Registry delivers the “Official Examination Report”.
  • Once the application is approved, the trademark gets published in the ‘Trademarks Journal.’
  • General public can file an application for opposition within the time period of 4 months.
  • If no one opposes the mark then the registration is granted after the lapse of 4 months. On the other hand, if there is any opposition then it has to be resolved before the registration can be granted.
  • The Trade Marks Registry issues an official letter informing the application’s acceptance as well as the trademark certificate when all necessary consideration has been given.
  • 15-18 months are required for this process.
  • The validity of the trademark is only 10 years.
  • Renewal can be done by paying the prescribed fees. But it can be renewed for only another 10 years. 

3. Copyrights

Copyrights are governed by the Copyrights Act, 1957. It was recently amended in 2012. This Act is in accordance with international norms like the Berne Convention, Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, and the World Intellectual Property Organisation (WIPO) Copyright Treaty (WCT).

For a set period of time, a copyright gives the creator the monopoly to regulate the reproduction or modification of his or her work. Copyrights cover literary works, cinematographic films, recordings, books, software, etc. The registration process is mentioned below:

  • The first step is to file an application for registration along with the copy of the work that is to be copyrighted.
  • It can also be filed online on the official website (copyright.gov.in).
  • The next step is examination of the submitted work. 
  • Objections can also be raised which requires a reply within 30 days.
  • After the objection (if any) is resolved, the Copyright Office issues the certificate of copyright.

4. Industrial designs 

The Designs Act, 2000 governs all the matters relating to industrial designs in India. The followings steps should be followed to register an industrial design:

  • The first step is to submit documents like registration form and four copies defining the design (for 2-D representation: 33cm x 25cm) exhibiting all components of the design from various perspectives (like front, back side, top, bottom, perspective, etc.)
  • The next step is to file the application at the Patent Office. (design wing)
  • The application is assigned a number.
  • Examination of the application is done and if there are any defects then they are conveyed.
  • Correction of the defects must take place before the expiration of a time period of 6 months.
  • A personal hearing may happen if the Controller is not satisfied. The applicant has the right to move to the High Court before 3 months.
  • Acceptance of the application leads to publication in the patent journal. It is notified to the applicant.
  • The validity of the industrial design is for 10 years.
  • It can be further extended by a period of 5 years by applying for renewal.

International protection

IPRs are territorial and not global in nature and thus, they are recognised only in the domestic country. For international protection, additional registration is required. WIPO recognises the following international registration systems:

  • Madrid System (trademarks),
  • Hague System (industrial designs),
  • Patent Cooperation Treaty (patents).

Unregistrable IPs

There is a category of IP which cannot be registered to protect its secrecy. Trade secrets and know-how are not generally registered to keep it a secret. Though without registration, they face a greater chance of infringement but as the name suggests, they are known for their secrecy and if they are registered then the whole world will know. The classic example is the recipe of Coca-cola. If the company patents it then it will only be valid for 20 years and after that it will be available for the world to use. 

Because trade secrets, by definition, operate in secrecy, and we know far less about their significance in market competition than we do about patents, copyrights, and trademarks, they are regarded as the intellectual property’s stepchild.

It is important for the company to protect the trade secrets as it is one of the most important IPs. They can be protected under unfair competition laws, torts, and on the basis of the principle of equity. But an approach is to keep it a secret and keep the following points in mind:

  • Ascertain that only a small number of employees have access to specific secret information.
  • Secure the confidential information in the IT system’s password-protected drivers and update them as needed.
  • Grant only a certain set of employees access to a part of confidential information while granting another set of employees access to another part of confidential information.
  • Adopt a well-thought-out code of conduct that explicitly states that all information gathered at your organisation, whether directly or indirectly, must be treated as completely confidential information.
  • Make sure that any behavior that violates the confidentiality principles and guidelines is subject to consequences.

Maximisation of gain

After performing the initial steps towards the commercialisation process the next step is to adopt a strategy to make profits. Like tangible assets, IPRs can also be sold and licensed out. Moreover, IPs can be licensed or assigned to more than one person or party as they are inexhaustible in nature. 

There are various ways through which IP can be monetized. The first and foremost step is a well-drafted contract. The contract is of paramount importance in the commercialisation process. The following types of contractual agreements are preferred for commercialising IP assets:

1. Non-disclosure agreements

To engage in business with prospective partners, a company needs to reveal sensitive information about protected or to-be-protected IPRs, preliminary R&D results, manufacturing processes, trade secrets, know-how, and so on. To protect these secrets and confidential information a non-disclosure agreement plays a crucial role.

Non-disclosure agreements (NDAs) are designed to keep your potential business partners from releasing any confidential information you acquire in confidence that is related to your firm. NDAs can be bilateral or unilateral, depending on whether both parties agree to keep particular information completely confidential, or if only one party agrees. An NDA should contain the following clauses:

  • Definition of the term ‘Confidential Information.’
  • Description of the information that is not protected by the NDA.
  • Specification of the legislation and jurisdiction chosen.
  • A list of particular purposes for which the receiving party can use the information.
  • Potentially a list of entities with whom sensitive information can be shared provided specific requirements are met.
  • Damages clause in the event that confidential information is unlawfully disclosed.
  • Duration clause specifying the period of the NDA.

2. Assignment or sale

When the whole control of the IP right(s) is conveyed to another individual, it is called an assignment. Selling a patent, trademark, or copyright to a third party so that they have absolute ownership over such IP is one illustration of an assignment. The assignor is the person who transfers possession, and the assignee is the person who receives possession.

Assignment agreements are fundamental in the domain of intellectual property because they empower IPR owners to transfer their IP for monetary gain, ensuring that the IP can be exploited for profit. There are various benefits of this kind of agreement. They are mentioned below:

  • Instant realisation of money when selling the IPRs for lump sum rather than having to wait up to 20 years.
  • Elimination of the possibility of the IP being declared worthless in court or being obsolete by introduction of new technology.
  • The assignor obtains an instantaneous remuneration after an outright sale of IP rights, with no future risk, commitment, or duty to maintain the IP.
  • The assignor will be relieved of the responsibility of ensuring that adequate royalty obligations are fulfilled.
  • The assignor is not required to keep track of the assignee’s exploitation activities.

Important sections

Patent- Form 16 has to be filed for registration of patent assignment agreement as per Patents Act. Without registration, the parties cannot use it as evidence in the court.

Copyrights- Section 19 of the Copyright Act stipulates that copyright assignments must be made in writing and signed by both the assignees and the assigner. Even copyright in a future work can be assigned under Section 18, but the assignment is only effective on the date the work is created.

Trademark- Assignment of trademark is cover under Section 37 to 45 of the Act.

Geographical indicators- These are public proprietary rights and thus prohibited by the Act to be assigned. 

3. Licensing agreements

Licensing agreements are the most used contractual agreements in the commercialisation process. The rationale behind is that tangible assets can only be rented out/licensed once but in the case of IPs, they can be licensed to a lot of parties at once in different geographical locations.

IP licensing is the procedure through which the owner of intellectual property (IP) grants authorisation to third parties to use his or her IP asset(s) for a certain period of time, for a specific purpose, in a specific region, and under negotiated terms.

Here are a few reasons why Licensing is one of the best ways to earn money through IPs:

  • Money can be earned in the form of royalties and licence fees.
  • Business expansion in other countries and new markets.
  • Capitalisation of enriching knowledge can be obtained from exploitation of IPRs.
  • Control how the IPRs are being used.
  • Learn the necessary adaptations required.

There are three types of licensing agreements. They are:

  1. Exclusive licensing agreement: The Licensor (i.e., the creator of an IP asset) grants the licensee unrestricted permission to utilise the licensor’s IPRs in a specific territory (i.e., the whole country, a specific area, etc.). On the same territory, the licensor will not allow anybody else to use its IPRs. In reality, under this paradigm, the licensor himself will not be permitted to utilise them in that region.
  2. Non-exclusive licensing agreements: The licensor reserves the authority to appoint additional licensees to exploit its IPRs in the very same territory as the licensor. To put it another way, the licensor is free to licence its IPRs to others and, of course, to use them himself.
  3. Sole licensing agreement: The licensor agrees not to appoint any additional licensees in this model, but it reserves the ability to utilise the IPRs in concern on its own.

 Important clauses

  • The IPRs licensed should be identified and defined precisely.
  • Comprehensive overview of the licensee’s rights under the licence (i.e., dos and don’ts).
  • Describe the kind of licensing agreement. (exclusive, non-exclusive or sole)
  • Monetary reward i.e., compensation.
  • Time duration.
  • Sublicensing policy.
  • Exact description of the licenced IPRs’ geographical area of exploitation.
  • Confidentiality of the IPRs.
  • Ownership and rights to possible enhancements of licenced IPRs.
  • Dispute resolution mechanism in case of infringement.

Difference between assignment and exclusive licensing agreement

The difference in result between an exclusive IP licence and an IP assignment can be subtle. In the end, the differentiation will be determined by the substance of the paperwork pertaining to the supposed IP transfer. If the ability to sue infringers has been retained, as well as the authority to use the IP at a later stage or under particular conditions, these factors will impact the assessment.

4. Cross-licensing agreements

Cross-licensing is a licence arrangement between two or more parties in which each party commits to transfer the authority to utilise their intellectual property to the other. With respect to intellectual property, this sort of licensing arrangement might confer mutual rights to all parties concerned.

The following are the advantages of cross-licensing:

  • Collaboration of technology between diverse businesses could lead to a substantially improved output.
  • Cross-licensing could also contribute to improved product compatibility.
  • It could aid in gaining exposure to fresh markets and lowering product development expenses.
  • Taking advantage of the other party’s promotional or production expertise to reduce the time it takes to promote the product.

5. Technology transfer agreements

Technology transfer, as the name implies, is the process through which one party transmits its technology to another for economic interests or the development of new products. A contract is signed between the parties to transfer technology. In a way, a technology transfer agreement is a form of IP licence in which the contract’s goal is a part of technology (whether incorporated in a product, protected by a patent (registered or pending), or in the development process).

Major points in a technology transfer agreement are:

  • The application and utilisation of the technology that is to be conveyed.
  • The subject of future advancements made by the individual or company who purchases the technology must be properly addressed.
  • Technology transfer agreements are considerably shorter in tenure than other kinds of licences.
  • Typically, depending solely on the data provided in the patent, technologies are difficult to operationalise. Disclosure of trade secrets and know-how may be required for effective use, which should be included in the same technology transfer agreement.

Example

Monsanto Inc. established the BG I and II genetically engineered technology, which produced a toxic protein fusion in the plant cell and reflected in the cotton ball when injected into hybrid cotton variety seeds. As a result, the pink bollworm was kept from harming the crop. This method (BG II) was patented in India and licensed to approximately fifty Indian hybrid cotton seed firms via “technology sub-licensing agreements.”

It’s worth highlighting that these agreements weren’t labeled “Patent Licensing Agreements” because patent licensing was only a minor portion of the overall tech-transfer agreements, which also covered germplasm exchange, know-how with regard to cross-hybridisation, and so on. In such complicated tech-transfer agreements, payment of technology transfer charges can be distinguished from payment of patent royalties.

Nanoclean Nasofilters, pollutant filtering devices formed by a group of IIT-Delhi degree holders, are one excellent illustration of a productive technology transfer in India. The creator of the technology and his fellow colleagues own the start-up Nanoclean, which holds lifelong-exclusive privileges to commercialisation of the technology.

6. Joint ventures agreements

Even the wealthiest corporations nowadays do not do everything on their own. In many circumstances, collaborating with other businesses is not only essential, but it is also a great method to save money and effort.

In legal terminology, a joint venture is formed when two or more partners get together to start a new project with certain common goals (JV). Joint ventures are commonly founded by forming a new and distinct legal entity. They are sometimes simply constituted by a contract, in which participants agree to collaborate and assign roles and obligations. Joint venture agreements have the following benefits:

  • Obtaining funds or gaining exposure to specialised technology.
  • Improving the ability to find raw materials or use the most efficient distribution methods in the niche venture.
  • Using indigenous knowledge and connections to promote desirability.

The IP considerations that must be addressed when getting into a JV agreement can be divided into four categories, each of which corresponds to one of the four stages of the JV agreement discussion and execution:

A. Pre-agreement stage

  • NDA- If any confidential information is being communicated to potential partners, then non-disclosure agreement is of utmost importance. 
  • Due diligence- Conducting thorough due diligence on business partners is really important as it will give a better idea of what they can bring to the table, particularly their IP capability.
  • Legal advice- Legal counsel is required with respect to anti-trust laws.

B. Commencement stage

  • Assignment of IP- Choose whether to assign or licence IPRs to the Joint Venture, as well as how to do so. 
  • Negotiation- Negotiate the conditions of the assignment/license of underlying IPRs for the joint venture’s profit.
  • Ownership clause- Accord on all pertinent ownership concerns relevant to new IPRs that the joint venture may produce, as well as potential changes to existing IPRs.
  • Operational clause- All essential implementation and operationalisation concerns should be agreed upon (e.g., who can use IPRs, how they can be used, market utilisation, validity, restrictions, revenue sharing, and so on).

C. Implementation stage

  • Monitoring procedure- A protocol should be established to guarantee that all accepted IP clauses, including ownership and implementation issues, are followed.

D. Conclusion stage

  • Results- Participants to a JV evaluate whether the partnership generated the expected results, including in regards with IPR production and use, during this period.
  • Termination- If the parties decide to discontinue their partnership, they can negotiate and settle on how to share the tangible and intangible assets developed by the JV.
  • Renewal- However, the parties may choose to prolong their cooperation by extending the existing JV’s terms or entering into new ones. IP considerations will also play a significant part in this case.

7. Franchising agreements

Engaging in a franchising agreement is amongst the most fascinating ways to commercialise IP assets. Franchising is a form of licensing agreement that enables businesses to expand and distribute products without having to “reinvent the wheel.” Such is because it allows for the duplication of a specific business model that has previously proven to be extremely effective. These are the essential characteristics of a franchise:

  • Licenses-The franchisor grants one or several franchisees the authority to exploit the franchisor’s IPRs. 
  • Royalties- In exchange, the franchisee will give royalties to the franchisor (along with a substantial amount payment at the start of the deal).
  • Assistance- The franchisor assists franchisees (for instance, by providing necessary know-how and educating them in marketing strategies, political posturing, and accounting, among other things);
  • Control- The franchisor has a considerable amount of discretion over the franchisee’s activities (and especially over how they exploit the franchisor’s trademark).

In another terms, a franchisor who has created a notably profitable business structure decides to extend its business by allowing multiple franchisees, in various regions, the right to copy its business structure for a set length of time in lieu of a monetary fee. The franchisor grants the franchisees the permission to utilise its IPRs, which encompass trademarks, copyright, trade secrets and know-how, and in most circumstances, industrial designs and patents, as elements of the contractual deal. The franchisees shall work under the supervision of the franchisor and in accordance with the franchisor’s guidelines. Franchisees will also receive certification and support from the franchisor.

Benefits to the franchisee

  • Minimised use of resources by not having to start a business from the ground up.
  • Increase in profit by utilisation of franchisor’s IPRs including its goodwill, trademark and logo.

Benefits to the franchisor

  • A low-cost diversification of its firm into new geographical territories while maintaining substantial influence over how the franchisees conduct business. 
  • A tremendous benefit in the form of the typically enormous income earned by the franchising agreement.

There can be some risks to franchising agreements too. It may include inappropriate use of trade secrets, vicarious liability, the risk to the goodwill of the company, etc.

8. Merger and acquisition

Merger and acquisition (M&A) is a process in which either the two corporations merge into one or one acquires the other. It is a much wider concept than that of the franchise. It leads to the transfer of all the properties to the larger corporation including IP.

9. Cooperation/collaboration agreements

A contract in which two or more parties commit to collaborate on a specific project is known as a cooperation/collaboration agreement. For instance, a corporation may develop unique technology that necessitates more R&D from a different industry in order to complete the product. The corporation might integrate efforts and resources with another party to bring the innovation to market faster and with minimal R&D expense by working with another party. Collaboration agreements differ from joint venture agreements as the latter creates a new legal entity while the former is just a contract between the parties. The collaboration agreement may include:

  • Exchange of know-how and trade secrets;
  • Sharing of skills and expertise;
  • Undertaking R&D;
  • Ownership and command over the IP developed as an outcome of the agreement;
  • Any IP essential to the venture that either party owns beyond the partnership.

9. Research and development agreement

R&D agreements are a form of co-operation/collaboration agreement in which two or more businesses join forces to conduct collaborative research and development operations in order to generate a product, such as IP, or a technology that includes IP. The Indian Contract Act, 1872 governs these agreements. In most cases, an R&D agreement will include the following items as part of its framework:

  • Objective;
  • Scope;
  • Recognition and licencing of each party’s own intellectual property generated beyond the collaboration (before or during);
  • Possession of intellectual property (IP) and/or know-how developed throughout R&D;
  • Ownership and usage rights in collaboratively generated products, technologies, and IP;
  • Costs, expenses, risks, and earnings that will be shared between the parties;
  • Personnel, facilities, assets, and other technology that will be used.

Example

A robust R&D agreement entails two companies combining their expertise. Considering the latest collaboration between Mylan Labs and Biocon Ltd in India, which resulted in the sale of a biosimilar oncology medicine trastuzumab under the brand name “Ogivri” in the United States in December 2019. Biocon Ltd. and Mylan partnered through R&D agreements to combine their abilities in biopharmaceutical research and regulatory clearances (i.e., pharmaceutical development).

National Intellectual Property Rights (IPR) Policy 2016

India’s National Intellectual Property Rights (IPR) Policy was launched by Finance Minister Arun Jaitley in 2016. The policy’s purpose is to foster IPRs as a tradable monetary asset, while also encouraging innovation and entrepreneurship as well as safeguarding the public interest.

The policy recommends a study to look into the viability of an IPR exchange to enhance commercialisation and value for IPs. By bringing together investors and IP owners/users, such a unique IP market might encourage development in IP-driven industries. If this IPR policy is implemented properly and transformed into a viable and practical solution, then IP commercialization in India will achieve its true potential.

Case studies

1. Tropical Botanical Garden and Research Institute (TBGRI)

Jawaharlal Nehru Tropical Botanical Garden and Research Institute (JNTBGRI) formulated ‘Jeevani’ which comes from the arogyapaacha plant. They signed a licensing agreement with Arya Vaidya Pharmacy Ltd. and earned US$50,000 in the year 1955. JNTBGRI did not have international IP protection and thus, suffered a few challenges and later on realised that IP protection is one of the most crucial strategies for success.

2. Council of Scientific and Industrial Research

CSIR was able to effectively licence a technology that has the capability to give accessible, life-saving medicine to people all over the world through R&D and strategic utilisation of the IP system. In 2010, CSIR made a total of US$150 million by licensing its drug to Nostrum Pharma.

3. Biocon Ltd.

Biocon was founded on the principles of innovation and strong intellectual property protection. On the one hand, the company’s inventions help it thrive, while on the other hand, they have several good societal ramifications, all of which are greatly facilitated by IP. Licensing is a significant and crucial aspect of Biocon’s partnerships and collaborations, as it allows the company to licence in or licence out technology and intellectual property for research and development projects.

4. Dr. Milind V. Rane / Unidyne Energy Environment Systems Pvt. Ltd.

Dr. Rane understood a lot about the inherent benefits of using the patent system effectively during the process of commercialisation of the MHRU. Although collaborative efforts between inventors and businesses in intellectual property development have many perks, benefit sharing can be a source of contention if controversial topics are not resolved before work begins. Dr. Rane and Unidyne’s work demonstrates that these challenges can be overcome with adequate contract responsibilities and obligations.

Suggestions

  • Companies underutilize their IPs due to lack of information about how the IPR system works. Awareness about IPR is very important as it is a fairly new concept. 
  • The concept of patent litigation insurance should be adopted to avoid huge expenditure in litigation.
  • Government should start programmes focused at lowering the expense of acquiring and protecting the IPRs.
  • Subsiding the cost of IPRs for SMEs and start-ups.
  • Integration of R&D funding with IP protection.
  • Integration of all scattered framework of IPR laws in one Act for better implementation and understanding. 

Conclusion

The passage of time has made us acknowledge that intangible assets have gradually become a crucial segment of the economy. “IPR is already a part of the strategic options in the knowledge industry.” Evaluating the potential of IP and capitalisation on its true value is the most pivotal aspect for a long-term economic foothold.

Whilst IP protection is available all around the world in various forms such as registration, filings, licensing, and barring from abuse, most owners conveniently overlook the worth of their assets and neglect to protect them. Being caught off guard by any market entity might cause havoc, both monetarily and in terms of reputation, which would be extremely destructive to the institution’s growth. Registration and protection of IPRs is a costly and time-consuming process. However, these steps lay the foundation for commercialisation for IPRs and thus, are crucial in nature.

With the age of globalisation and the advancement in digital technology, the world has truly shrunk in size, necessitating an increase in the demand for protection. It is just as crucial to building an IP asset as it is to protect its ownership and management including its commercialisation. It’s high time for businesses to realize the benefits of these rights and put them to good use.

References

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