Niche strategies for IP enforcement and licensing for Entrepreneurs & Startups. A talk given for American University, Dubai.

1. IP Enforcement for Entrepreneurs
HASIT B. SETH
American University In Dubai
A Guest Lecture For Dr.Tarek Hajjiri’s Class
14 June 2021
(c) Hasit Seth, 2021

2. Introduction
♔Name: HASIT B. SETH
♔I am a disputes lawyer in India. My practice focuses on commercial
dispute resolution covering IP, construction, contracts in litigation
and arbitrations
♔I am licensed to practice law in NewYork and India
♔You are welcome to connect at https://www.linkedin.com/in/hbs and
keep in touch
(c) Hasit Seth, 2021

3. Outline
♔Overview of IP
♔Types of IP
♔IP & Economic Sectors
♔Obtaining IP Protection
♔Monetising IP - Licensing
♔Enforcement
♔Litigation
♔Arbitrations
♔Defensive Strategies
(c) Hasit Seth, 2021

4. Overview of IP
♔Intellectual Property helps protect competitive business
advantages.
♔It also helps businesses generate income from IP.
♔Startups can have a disproportionate leverage in seeking
investments if they have strong IP and good protections.
♔Consider IP as part of sustainable growth and revenue model of your
business.
(c) Hasit Seth, 2021

5. Types of IP
♔Patents
♕Protects inventions that are novel, non-obvious and have utility.
♕No world patent exists. Can get a few regional patents in EU and Africa.
♕There is a global filing system called PCT (Patent Coop.Treaty).
♕Expensive to obtain them in each country.
♕Chose filing countries based on manufacturing/sourcing or markets.
♕Length: 20 years from date of filing; cannot be extended.
♔Trademarks
♕For brands and logos applied to products or services.
♕National systems and a Madrid Protocol for global filings.
♕Time period for validity is about 10 years; renewable by a fee.
(c) Hasit Seth, 2021

6. Types of IP
♔Copyright.
♔Given for expression of ideas stored/fixed in a tangible medium.
♔E.g. writing, painting, drama, movies, etc.
♔Does not need registration in most countries. It is automatic upon
creation of expression.
♔Special considerations for cinematographic works, satellite
broadcasts etc.
♔International protection is available via a treaty.
(c) Hasit Seth, 2021

7. Other Types of IP
♔Designs.
♔Semiconductor Layouts.
♔Trade-secrets.
♔Know-How.
(c) Hasit Seth, 2021

8. IP & Economic Sectors
♔Consumer Goods – Food, FMCG, Consumables etc.
♔Consumer Services – Accounting, Restaurants, etc.
♕Trademarks play a critical role as good will is built by attracting customers.
♕E.g., McDonalds, Starbucks, Emirates Airlines, etc. are
♞All businesses recognized for their strong brands .
♞Represented by unique trademarks.
♕Copyrights in media related consumer industries
♞Disney, Netflix and James Bond movies.
♕Patents
♞Pharmaceuticals, iPhones,X-Box and many more things are protected by 100s of
patents for each unit of them.
(c) Hasit Seth, 2021

9. ObtainingIP Protection
♔Registration of Patents,Trademarks and Copyrights.,
♔Provides for remedies only available upon registration
♔Some countries have remedies for non-registered IP like passing-off
for unregistered trademarks,
♔Patent applications need technical expertise to draft so are
expensive to prepare. Patent drafting and registration fees in
multiple countries can be costly.
♔Trademark filing and periodic renewals all cost fees but are quite
reasonable around the world.
♔Copyright does not need registration but brings additional benefits
if registered.
(c) Hasit Seth, 2021

10. MonetizingIP
♔Example: Let’s say you invented a new way to reduce cost of
recycling water in low water areas.
♔To bring this to market you may not have the capital, technical
experience or manufacturing know-how.
♔You need to collaborate with those who have this.
♔How?
♔Through a license or a joint-venture.
♔All this brings regular contract and corporate law enforcement to
table if breaches occur.
(c) Hasit Seth, 2021

11. Enforcement
♔For registered IP (Patents/Trademarks/Copyright), remedies are
provided in national laws for enforcing the same.
♔Remedies can be civil or criminal.
♕Civil Remedies: Damages (compensation) or injunctions (orders to stop).
♕Criminal Remedies: Fines and imprisonment, particularly for counterfeiting
of trademarks and piracy of copyrighted materials (not for patent
infringement usually).
♔Special remedies: Stopping imports that violate IP, etc.
(c) Hasit Seth, 2021

12. Litigation
♔Litigation, anywhere, is usually a last resort and is preceded by
negotiations and settlements if possible.
♔IP litigation is expensive.
♕An estimate says that each side in a US patent litigation spends on an
average a million dollars in legal fees, whether you win or lose.
♔Multi-country litigation is even more expensive.
♔But it is necessary at times and justified by a business case.You
cannot allow competitors to misuse your IP.This can reduce your
sales or stop growth of business.
♔Litigation strategy can help in reducing litigation costs.
(c) Hasit Seth, 2021

13. RecentLitigations
♔Oracle v. Google – Android related copyright dispute – USSC.
♔Generic trademarks – Booking.com – USSC.
♔Epic Games v. Apple – Antitrust issues.
(c) Hasit Seth, 2021

14. IP InfringementRemedies
♔Infringement
♕Available for registered trade-marks, patents and copyrights.
♕Each remedy has different requirements based on the type of IP.
♕Standards of infringement differ in each case.
(c) Hasit Seth, 2021

15. PatentInfringement
♔Patent Infringement
♕Based on whether a claim of a patent “reads on” a product’s features.
♕Damages are either accounting of profits of infringer or lost-profits of
owner.
♕Independent invention is no defense.
♕No intent of infringement is required.
♕Literal infringement & Doctrine of equivalence.
♕Damages in some countries have an upper limit.
(c) Hasit Seth, 2021

16. Example:PatentInfringement
• CLAIM
• A seating apparatus comprising:
a vertical support portion;
a horizontal seating portion
attached to the vertical
support portion; and
at least three support bases
attached to the horizontal
seating portion.
Source: Image Source – Wikipedia.org
(c) Hasit Seth, 2021

17. Trademark Infringement
♔Trademark Infringement
♕Based on customer’s likelihood (actual confusion not required) of confusion
in the market place.
♕Example of word mark infringement: Polaroid Corp. v. Polarad Elects.
♕Example of logo mark infringement:
(c) Hasit Seth, 2021

18. Copyright Infringement
♔Copyright Infringement
♕Based on reproducing, derivative work, distributing copies, performing
publicly and display work publicly.
♕Requirements:
♞Substantial similarly, and
♞Copying.
(c) Hasit Seth, 2021

19. Licensing& IP Problems
♔Policing/Audit problems.
♔Joint invention problems.
♔Royalty issues.
♔Market-size assessment issues.
♔Exclusive vs. Non-exclusive licensing issues.
♔Scoping problems.
♔M&A and Insolvency issues.
♔Sub-licensing issues.
♔Third-party infringements.
♔Transferability.
(c) Hasit Seth, 2021

20. LicensingLitigation
♔LicenseTermination.
♕Dubai based hotel chain issue.
♔Post-termination Continued Use.
♕Injunctions to stop & damages as remedies.
♔Parallel-Competition.
♕China issue.
♔Refusal to Renew or Expand An Existing License - litigation.
(c) Hasit Seth, 2021

21. Arbitrations
♔IP Arbitrations are available but not very popular.
♔WIPO (World Intellectual Property Organization) has a specific
mediation and arbitration center related alternate dispute resolution
procedure.
♔Arbitrations are by consent, i.e. parties must have agreed to
arbitration while contracting or later but there cannot be any
arbitration if only one side consents to it.
♔Few specific aspects in intellectual property like may not be
arbitrable due to public policy in specific countries.
(c) Hasit Seth, 2021

22. DefensiveStrategies
♔Ownership & operation.
♕Several companies have created different subsidiaries to keep IP ownership
and operations separate. Also, this subsidiary is then located in Ireland for
tax benefits.
♕Separate IP ownership in a holding company can be useful if operations are
to be sold separately from the brand in future.
♔Joint ventures .
♕Clearly defined ownership of IP generated by participating companies and
the joint-venture during and after life of the joint-venture with proper exit
clauses.
♔Valuing IP is tricky and investors may want to be more careful in
using IP as a metric for invest valuation.
(c) Hasit Seth, 2021

23. Thank You.
Questions?
(c) Hasit Seth, 2021