Tuesday, 18 September 2012


-Swapna Sundar, IP Dome

On September 16, 2011, President Barack Obama of the United States signed into law the American Invents Act at the Thomas Jefferson High School for Science & Technology in Alexandria, Virginia. The Act amends the Patent Law in the United States and puts in place some unique features. In this article I will explore some of them.

President Obama pointed out in his 2011State of the Union Address: “We know what it takes to compete for the jobs and industries of our time.  We need to out-innovate, out-educate, and out-build the rest of the world.”The America Invents Act (AIA, for short) is to enable the economy to recover by providing the US Patent and Trademark Office (USPTO) with larger resources to speed up the processing of patents and reducing backlogs. This in turn would lead to faster translation of inventions to industrial products, thereby increasing jobs and technology-led enterprises.

The AIA switched to the First-inventor-to-file rule, from the First-to-invent rule and expands definition of prior art, to include public use, sales, publications, and other public disclosures anywhere in the world as of the filing date, other than publications by the inventor within one year prior to filing. Notably prior art includes foreign offers for sale and public use.Also confidential sales of the patented technology will no longer mark the beginning of the 1 year grace period.

The Act revises and expands post-grant procedures while retaining existing ex parte re-examination. Pre-issuance submissions by third parties are added and the scope of inter partes re-examination is expanded and renamed inter partes review. The AIA also adds post-grant review. Another significant change is that while an inventor is still required to “set forth” the best mode for working an invention, failure to disclose a best mode is not a basis for invalidating or rendering an issued patentunenforceable. Insufficient disclosure is no longer a defence against patent infringement

Further, start-ups are will have an opportunity to have important patents reviewed in one-third the time with a new fast-track option that has a guaranteed 12-month turnaround.The AIA added a micro-entity status which includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications apart from those the inventor was obligated to assign to an employer. A micro-entity is entitled to a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.Patents in green technology can be filed at no cost to the inventor.

The USPTO's dynamic Director David Kappos is set to lead America into a new era of Patenting.

*Swapna Sundar teaches a P.G. Diploma course on Patentability of Inventions: US and EU perspectives, at the Nalsar University of Law. NALSAR Proximate education PG Diploma programmes are designed to meet the requirements of professionals in the field of science, technology, media and human rights. For further information go to http://www.nalsarpro.org/


THE IMPORTANCE OF MARKET RESEARCH: Sustainable Competitive Advantage in the Food Industry

-Team IP Dome* 

Understanding trends in the market including what your customer is buying today and what he is going to look for on the shelves tomorrow, what the condition of her health is today – and given her food and health preferences - what her health condition will be ten years from now; and also what their children are eating today during their snack time and what would attract that peer group five years from now, could decide whether your company is going to last through the transition or not.

The importance of market research in identifying research focus and IP portfolio construction cannot be over-emphasised; neither can the power of information. Start-ups in the food industry, particularly in India, do not pay sufficient attention to market research. There are several reasons for this. The first being, reliable and valid market research is expensive, whether commissioned or conducted by the entrepreneur; second, the entrepreneur may be driven by a passion – either for the product or the entrepreneurial activity – and may feel that market research is delaying the arrival of the product in the market. It may simply be that the entrepreneur does not want to receive any negative feedback on his product. Regardless of the reason, failing to do market research can amount to a death sentence for your food enterprise. The companies that do their homework the best are the ones that are likely to survive over the long term.

If you are interested in entering the food industry with a good IP portfolio including a good brand and trademark, vendor and retailer data and a strong and innovative product and positioning, it is necessary to understand the market in terms of:

Consumer: Your consumer preferences could give rise to brand loyalty. Understanding his preferences in terms of colour, taste, flavour, smell, texture, packaging, quantity and other such parameters could help you to tailor your product to meet his expectations. Further innovations to the product can also be driven by the consumer’s changing preferences. For example, if you are targeting small children with bakery products, it would be invaluable to know that small children prefer uniform and homogenous textures to mixed textures which are popular with adolescents.

Product: Studying existing products in the market would provide you with important information regarding the uniqueness of your (proposed) product. You would be able to then leverage this uniqueness by building on it, and creating a brand to highlight the difference. Innovative design in the product – such as unique colours, shapes and configurations, compositions, and new flavours, could add to the inherent uniqueness. For instance, if you are in a crowded market such as potato chips, it may be essential to differentiate your chips by providing different configurations, shapes, textures and perhaps additional flavouring or dips.

Competition: Competition needs to be studied in terms of target market, positioning, retailer agreements, supply chain efficiency (particularly in perishable goods), innovation and IP protection, and changing consumer preference. It is necessary to identify the competitor and also to understand the areas of competition. It is possible that the same competitor may not be competing against you in your entire product line. By identifying competition appropriately, enterprises can allocate scarce resources to those products which are receiving strong market response. For instance, if your cream biscuits are receiving more response than those of your competitors, while your ready to cook pasta is losing out to a stronger competitor, it may be better to consolidate your cream biscuit market before allocating further resources and energy to the pasta business. Monitoring your competitor would also mean you are watching whether he is copying your product or passing off his product as yours by using a similar trademark or brand name.

One of the ways smaller companies could get reliable market research is by pooling together their resources and getting a single report done by a leading market researcher in that industry. Subsequently, the cluster could share the output of the report in non-competing ways.

*Our team was invited to make a presentation on IP at the Technology Entrepreneurship Development Programme (TEDP) in Food Processing organised by VITTBI under the aegis of National Science and Technology Entrepreneurship Development Board, DST, Govt. of India and Entrepreneurship Development Institute, Ahmedabad on 07 Sep, 2012. For further information on the programme please contact tbicoordinator@vit.ac.in