One-Day Seminar on Software and Electronics Patent Portfolio With Focus on Preliminary Preparation, Prosecution, and Litigation in India and US

Transcription

1 SUGHRUE MION, PLLC, USA One-Day Seminar on Software and Electronics Patent Portfolio With Focus on Preliminary Preparation, Prosecution, and Litigation in India and US Seminar for In-House IP Counsels, R&D Scientists, IP Practitioners, Patent Agents and Attorneys in Hi- Technology Industry 23 rd Feb 2017: Sun-n-Sand (Bund Garden Road), Pune 24 th Feb 2017: Le Meridian (Opp. Bangalore Golf Club), Bangalore

2 ABOUT THE SEMINAR With Patents becoming a core part of existing economic ecosystem, particularly for Software, Information Technology, IoT, Embedded Systems, and Telecom industries, exploitation of Patent Portfolio has become an industry in itself, especially with the cost of development and protection of the portfolio being enormous. It is therefore crucial to understand important Patent issues, not only by In-House IP Counsels but even more importantly by R&D Scientists so as to minimize efforts in Patent Development, and maximize commercial gains. It is crucial to understand nitty-gritty s of patent portfolio creation, protection, management, and commercialization, without which there would always remain an open door for a serious blow either from an infringement perspective or from a patent invalidation perspective or the portfolio would remain under-commercialized. Exclusivity rights granted through patents can only be utilized if there is comprehensive knowledge of various patent related issues, more so when National Patent Laws & Practices relating to prosecution practices, drafting practices, examination practices, enforcement practices and commercialization practices differ substantially across geographies. Furthermore, with growing clarity concerns on Software Patentability in India, and new guidelines coming out for Computer related Inventions (CRI), it is imperative to understand how such guidelines are actually being implemented in real-life Patent applications. Sessions of the Seminar would also help understand how Indian Companies Strategize in view of the dynamic policy changes in the software industry. Lastly, with a number of cases being filed in on FRAND issues, it is very critical for all concerned stakeholders to understand how such litigations may impact them, how standard patents are being interpreted and challenged these days, along with how Competition Commission and other like regulatory bodies are handling complex royalty rate and unfair competition issues. The Seminar would answer clearly on all issues mentioned above and much more.

3 ABOUT THE SEMINAR HOW THE SEMINAR IS UNIQUE The proposed seminar is represented by a very strong and topnotch line-up of speakers from Law Firms and the Industry, wherein such speakers come from a variety of different backgrounds such as from Telecom, Software, Cellular/Mobile Technology, and Electronics Domains, and therefore offer a unique value proposition to the seminar attendees. The Seminar features presentation of important patent issues, as mentioned in this brochure. The speakers are a unique gathering of Patent Attorneys and In-House/Legal Counsels from leading Indian Corporates, who have extensive years of experience in their professional fields and are well acquainted with the Industry s need. These speakers will put across, to the delegates, a real insight of Patent Laws, Interpretation of CRI guidelines, FRAND based issues for Standard Patents, best practices for prosecuting, licensing and litigating Patents/IPs, and Portfolio Development Processes/Strategies. WHY ATTEND This is an opportunity when Patent Experts, Litigators, and Legal Counsels from varied backgrounds and having enormous expertise carrying different perceptions would be interacting with limited delegates and would answer to any question that the delegates may have. The speakers have thorough knowledge on the subject and have been working in the field for many decades. The speakers are selected such that R&D Scientists, In-House Counsels, Patent Attorneys, and IP Practitioners can get to know real insights and nitty-gritties followed in India and by Global Companies Developing Indian Patent Portfolio and Managing Large R&D Centers. The speakers would share real-life cases and experiences that can help attendees in following best practices for building their respective patent portfolios so as to best commercialize. WHO SHOULD ATTEND IP Groups, R&D experts, In-House IP/Legal Counsels, Patent Agents & Attorneys in the field of Practice, Patent Litigators, and Professionals in Legal Domain related to Software, Information Technology, Instrumentation, Electronics,Electrical, Embedded, Mobile Technology, IoT, and Telecom Domains.

4 : Registration SESSION OUTLINE Pune (23'rd Feb 2017) : Technical Session-I (By Tarun Khurana of Khurana & Khurana)Preliminary Preparation Required for Portfolio Development, Interpretation of Recently Issued CRI Guidelines; Exemplary Case Studies on How Software Patents have been Examined in 2016, and Best Practices while Replying back to Section 3(k) objections supported by multiple exemplary scenarios : Tea Break : Technical Session-II (By Chid Iyer of Sughrue Mion) Software Patent Prosecution Strategies in the US, Best Practices while Preparing and Prosecuting US Patent Applications in view of Alice, Enfish, among other like decisions, Best Techniques/Timings for Examiner Interview and Strategies while responding to Office Actions : Panel Discussion I (Abhishek Pandurangi (Moderator), Pranjali Modak (KPIT Cummins), Smita Raktawan (TCS), and 1 More Industry Speaker) Patent Prosecution Experiences for respective Patent Applications, How Inventors are guided to overcome Section 3(k) issues, Reviewing claim limitations to ensure international fitness, Patent Claim Drafting Strategies to demonstrate technical effect by explicitly showing novel interaction of the software with underlying hardware. Discussion of the famous US 101 case "McRO v. Bandai Namco Games America" and how software patents can get benefit to overcome 101 rejection based on this case. IP issues in contracts for software companies - some case studies and case laws related to contractual attachment to IP, technical know-how and data security that are relevant to software companies : Lunch : Technical Session III (By Akhilesh Srivastava of TCS) Key Takeaways from Patent Portfolio Development Strategy at TCS, Best Practices for implementing Open Source Licensing : Technical Session IV (By Dr. R.R. Hirwani of URDIP) : Tea Break :Panel Discussion II (Vinod Khurana (Moderator), R Y Deshpande (CDAC), Anubhav Kapoor (Tata Technologies), and Ajay Panwar (Mastercard))Patent Portfolio Development for Strategic Impact, Patent Portfolio Development Challenges, Most Important Policies and Processes that should be implemented Corporate-wide in order to develop a robust and defendable Patent Portfolio, How to effectively implement scientific techniques such as TRIZ to gain underlying advantage.

5 SESSIONS OUTLINE : Registration BANGALORE (24 th Feb 2017) : Technical Session I (By Tarun Khurana of Khurana & Khurana) Preliminary Preparation Required for Portfolio Development, Interpretation of Recently Issued CRI Guidelines; Exemplary Case Studies on How Software Patents have been Examined in 2016, and Best Practices while Replying back to Section 3(k) objections supported by multiple exemplary scenarios : Tea Break : Technical Session-II (By Chid Iyer of Sughrue Mion) Software Patent Prosecution Strategies in the US, Best Practices while Preparing and Prosecuting US Patent Applications in view of Alice, Enfish, among other like decisions, Best Techniques/ Timings for Examiner Interview and Strategies while responding to Office Actions : Panel Discussion I (Abhishek Pandurangi (Moderator), Irfan Modi (IBM),Dr. Ravi Tumkur (Philips) and Krishna Chellapilla (TCS)) Patent Prosecution Experiences for respective Patent Applications, How Inventors are guided to overcome Section 3(k) issues, Reviewing claim limitations to ensure international fitness, Patent Claim Drafting Strategies to demonstrate technical effect by explicitly showing novel interaction of the software with underlying hardware.ip issues in contracts for software companies - some case studies and case laws related to contractual attachment to IP, technical know-how and data security that are relevant to software companies : Lunch : Technical Session III (LakshmiNarayanan Ramachandran of Samsung) Intricacies of patent strategy & portfolio development-software perspective : Technical Session IV (Praveen Pani of Wipro) : Tea Break :Panel Discussion-II (Vinod Khurana (Moderator),LakshmiNarayan Ramachandran ((Samsung), Subhadip Sarkar (Cognizant), and Vinod Kumar (Tejas Networks)) Patent Portfolio Development for Strategic Impact, Patent Portfolio Development Challenges, Most Important Policies and Processes that should be implemented Corporate-wide in order to develop a robust and defendable Patent Portfolio, How to effectively implement scientific techniques such as TRIZ to gain underlying advantage.

6 ABOUT THE ORGANIZERS SUGHRUE MION: Sughrue Mion is one of the world's leading intellectual property law firms managing traditional and non-traditional intellectual property rights, for about five decades, with a wide range of clients around the world. Sughrue's more than 100 lawyers protect ideas- all ideas- and for the last 50 years have been helping their clients to develop, obtain, protect and leverage their intellectual property rights in technology areas ranging from a submicroscopic sequence of DNA to a vast constellation of satellites circling the globe. Sughrue's Pharmaceuticals, Biotechnology, Chemical attorneys are trained in technical disciplines that include molecular and cellular biology, biophysics, pharmaceuticals,chemistry, immunology, virology, genetics and agriculture biotechnology.their experts are particularly well versed in drafting claims to ensure the broadest possible coverage and have a long established expertise in handling patent interference proceedings that may be critical to determining basic patent rights in new areas of biotechnological and pharmaceutical dustries. Their litigators who specialize in chemistry have tried cases relating to pharmaceuticals, biotechnology, industrial chemical processes, specialty chemicals, and nano technology. Sughrue Mion handles a wide range of IP litigation matters for clients around the world, and when it comes to serving their clients, they go beyond traditional boundaries, advocating innovative theories and redefining the frontiers of law as they apply to creativity and invention. IIPRD: IIPRD is a premier IP Consulting and Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics, Transactional, and Litigation Support Services to Indian and International Corporates, Licensing Firms, and Global Law Firms. IIPRD has been established precisely to assist business houses in strategizing their growth by leveraging their IPR's through effective Creation, Promotion, Protection, and Commercialization of IP. IIPRD has a legacy of over fifteen years of existence, and is among the first Indian IP Firms to have core focus on Commercialization, Technology Transfer, and Licensing. IIPRD as strong team of over 85 professionals focus in complete Patent Support and Technology Consulting Matters ranging from conducting all types of Patent Searches, Research and Analytics, Preparation/Prosecution Support, Landscape Analysis, and Claim Charts/Infringement Analysis/Litigation Support.

7 ABOUT THE ORGANIZERS KHURANA & KHURANA ADVOCATES & IP ATTORNEYS: Khurana & Khurana, Advocates and IP Attorneys (K&K) is more than a full service Intellectual Property and Commercial Law firm. K&K was formed in the year 2007 with a very firm focus of providing end-to-end IP Prosecution/ Litigation and Commercial Law services in a manner that is Corporate centric and follows stringent delivery practices that are consistent and are above defined quality standards. K&K works closely with its sister concern IIPRD, both of which supplement each other in order to provide end-to-end IP Legal and Commercialization/Licensing services to over 3000 Corporates. K&K is a team of over 85 professionals spread across 6 Offices in India, and has strong rankings from Legal 500, MIP, IAM, Chambers, Asia IP, among others. Our team of IP Attorneys/Practitioners, having high level of technical and legal competence, gives us the right competitive edge and positioning, as a law firm focused on creating immense IP value for our clients. K&K through its experienced and qualified team of Attorneys/ Practitioners, across Technology and Legal Domains, gives a rare synergy of legal opinion, out-of-box thinking for protection of ideas/ip's and entrepreneurial spirits to its client base.

8 ABOUT THE FACULTY Chid Iyer Mr. Iyer s practice includes patent litigation and prosecution in complex technical areas in the electrical and computer arts. His representative cases include multi-patent litigation in the field of semiconductor memories and AI software. Mr. Subramanian has also been in involved in patent infringement cases pertaining to electrical motor control systems and chemical software. Mr. Iyer has prepared and prosecuted over fifty applications for a leading computers and communications research laboratory. In addition, he prepared and prosecuted a substantial number of applications in the areas of computer network hardware and software; VLSI design, testing and performance; software and algorithms for various applications; semiconductor processing; and bioinformatics. Mr. Iyer also engages in general client counseling including validity and infringement opinions in the above areas. Anubhav Kapoor Anubhav Kapoor is Tata Technologies General Counsel and Company Secretary and is based out of Pune. Anubhav is responsible for Tata Technologies global legal, IP, regulatory compliance and corporate governance practices and policies. Anubhav has about 21 years of experience. Anubhav has handled multifarious areas such as structuring strategic business contracts, IPR, global compliance design and audits, legal due diligence, M&A, arbitration & litigation management. Also being a corporate secretary he has also dealt with high visibility boards and handled complex matters including those related to corporate governance, sustainability, insider trading, private & public offerings. He is passionate about innovation and IPR and also heads the Corporate Sustainability and CSR practices globally. He has spoken on several national and international forums on topics related to IP. More recently he was listed in Intel-lectual Asset Management (IAM) Strategy 300 ( among the world s leading IP strategist.

9 ABOUT THE FACULTY Irfan Modi Irfan Modi is Senior IP Law Attorney at IBM India. He has around 12 years of experience working at Law Firms and inhouse. He is a Lawyer, Registered Indian Patent Agent and an Engineer. In his day to day job at IBM India, Irfan is involved in all IP related matters including evaluating invention disclosures, draft patent appli-cations for first filing at USPTO, prosecute patent applications at Indian Patent Office (IPO), review and advise on IP related issues/clauses in commercial contracts involving IBM India, handle Open Source Software (OSS) and Certificate of originality (COO) reviews, keep a close watch on IP related developments in India and drive/contribute towards IP Policy related work in India, advise/con-tribute on matters involving Copyrights, Trademarks and Domain name disputes and manage Outside IP Counsels (OC). Subhadip Sarkar Subhadip works for Cognizant Technology Solutions as Senior Director and manages Intellectual Property, Technology Licensing, and Business Alliances for the company. He is responsible for establishing and driving the IP and technology licensing strategies and implementing various IP practices across the company Subhadip has extensive work experience of more than 17 years in the field of technology and IP management. He has been instrumental in incubating IP practices from scratch in large corporations. Some of his core competencies including managing multi scenario, IP Strategies commercialization of IP, M&As, managing complex deal negotiations, Pricing and valuation of technologies, technology transfers, enabling alliances, managing Government Affairs and Public Policy, among others.

10 ABOUT THE FACULTY R. Lakshminarayanan Lakshmi heads the Intellectual Property Rights (IPR) Management in Samsung R&D India - Bangalore, and is responsible for championing systematic invention creation, securing enforceable patent protection & building high-quality patent portfolio for Samsung in India. Lakshmi has over 19 years of experience in the field of IPR, with specialization in patenting of software technologies and management of large global patent portfolio. Under his IPR leadership, Samsung R&D - Bangalore won (i) National IP Award Y2015 (ii) WIPO IP Enterprise Award Y2015 (iii) Zinnov Great Place to Innovate Y2015 & (iv) Samsung Special Award Y2016. Lakshmi is Graduate in Mechanical Engineering from the Institution of Engineers (India). He holds LLB from Karnataka State Law University and also an LLM in Business Law. He is registered to practice before the Indian Patent Office since year Ajay Panwar He specializes in patent and trademark portfolio management, pre-litigation activities, due diligence, licensing services, and providing counseling to business groups.he has around 11 years of experience in the field of IP with domain expertise in software and electronics. Prior to joining MasterCard in 2016,Ajay worked as in-house counsel for Adobe for six years and played a pivotal role in setting up IP processes in Adobe s India offices.ajay held various positions in legal processing outsourcing firm and back office of US law firm in India.Ajay is a Graduate in Electrical Engineering from IIT Delhi and also a graduate in law from Bangalore University. He is also licensed to practice as Patent Agent before the Indian Patent Office.

11 ABOUT THE FACULTY Vinod Khurana Vinod has been in the field of Business Legal Finance for the last 35 years with core focus on Commercialization, Licensing, and Valuation of Intellectual Property. Vinod represents top Indian and International Corporate Houses for Licensing their Technologies and other Intellectual Properties. Mr. Khurana has also been researching and educating on fighting thefts and frauds of Intellectual Properties and white-collar crimes, by practicing a mix of Law, Intellectual Property, Accounting, Ethics and Criminology coupled with his professional qualification being a B.Com, PGDFA, MBA, AICWA, CFA, LLB among other specialization qualifications in Investigation and Commercialization of Intellectual Property. He has extensive experience in conducting Investigation & Litigation and has represented numerous corporates for devising their Prosecution and Litigation Strategies such as Indian Oil Corporation, ITC, Bharti, Matrix Cellular among many others. Abhishek Pandurangi He has dealt with various types of IPR matters including Patent Searches, Patent Drafting, Patent Prosecution, Patent Commercialization, Trademark Litigation, Domain Name Dispute Resolution with UDRP, Copyright and Database Infringement Counseling. He started his stint in Intellectual Property with Evalue serve where he worked with several multinationals on their IPR projects after which he joined Netscribes India to develop their inhouse IP team. In 2010 he decided to take a plunge and started his own IR solutions from closer2patents, which supported over 300 clients in 16 countries having completed over 1000 IPR projects, and is now a part of Khurana & Khurana after a strategic acquisition, making Abhishek a partner and head of Mumbai office of Khurana & Khurana. He is a B.Tech - Chemical from UDCT (Mumbai) and a practicing lawyer and a registered patent agent.

12 ABOUT THE FACULTY Tarun Khurana Tarun has over 14 years of experience in a broad range of IP subject matters, and is the Co-Founding Partner and Patent Attorney of Khurana & Khurana, which is among the Leading IP Practices in India with 6 Offices and over 85 Practitioners. Tarun is among the top 12 Patent Prosecution Practitioners in India as rated by IAM, and has executed numerous assignments related to exercises of Patent Portfolio Creation, Protection, Prosecution, Litigation, Valuation and Commercialization for Indian and International Corporates. Tarun focuses on the Patent Preparation, Prosecution Electronics, Patent Valuation, Commercialization, and Litigation opinions for Computer Implemented, and Mechanical subject matters.tarun has a Bachelors in Computer Science Engineering, a Masters in Software Systems, Bachelors in Law, an MBA from IIM Lucknow, and is in pursuit of his PhD. Krishna Chellapilla He is a Senior IP Attorney at Tata Consultancy Services. He has around 15 years of experience in varied aspects of IPR. He is associated with TCS for more than 5 years and currently heads the in-house Patent Prosecution Team of TCS that involves mentoring, guiding and reviewing Office Action responses prepared by the team. He has been instrumental in setting up and building the in-house IP team of TCS. His core competencies include dealing with complex prosecution cases across jurisdictions and has successfully led the team to achieve more than 160 patent grants across jurisdictions. Prior to joining TCS, he served various firms including a US based LPO firm. He is a graduate in Law (LLB) from Osmania University, a Science graduate, and did his Post Graduate in Intellectual Property from NALSAR. He also holds an MBA degree.

13 ABOUT THE FACULTY Smita Raktawan She has been associated with TCS as a Patent Specialist in the IPR division. Prior to working with TCS, she has experience of working in a Law firm, CSIR organization, and Petro-chemical Industry. Overall she has 9 years of work experience. She holds graduate degree in chemical engineering, Masters in Computer management, and a PG diploma in Patent Law. She has worked closely with many Indian as well as International clients. Her experience and expertise mainly include software patents drafting and prosecution across several jurisdictions including US, EP, JP, IN, AU and CN. She has also work experience in patent landscaping and patent analytics related to chemical technology. T.V. Ravi He completed his B.E. (Electronics) from Bangalore University, his M. Tech (Electronics & Communication) from Pondicherry University, his Ph.D (Computer Science) from University of Mysore, his LL.B from Karnataka State Law University. His research areas include pattern recognition, clustering, data mining, knowledge discovery, symbolic data analysis, cluster validity, supervised and unsupervised learning, genetic algorithms and its application to symbolic clustering. He has published over 20 papers in International Journals and conferences. From 2002 onwards he was been working with Philips Intellectual Property and Standards as an IP Counsel. He has completed his Diploma in Patent Information Specialist from GO, The Hague, The Netherlands. He is a registered Indian Patent agent and practices at the Indian Patent Office. He primarily has the responsibility related to IP creation, IP value extraction, IP value contribution and IP counselling activities catering to Personal Health and Population Health Management business groups of Philips.

14 ABOUT THE FACULTY M Vinod Kumar He completed his B.Tech. ( ) specializing in Analog Integrated Circuits from the Department of Electrical Engineering, Indian Institute of Technology, Madras (IITM) and M.E. ( ) in Telecommunications from the Department of E.C.E., Indian Institute of Science, Bangalore (IISc). Since then he is with the CTO office of Tejas Networks Ltd. At Tejas he is developing and managing DWDM and ASON Planning Tool, and undertaking R&D on communication functions and infrastructure for Long-ranged & Secure IoT. He is also the Chairman of the Working Group called Radio Network Evolution and Spectrum (RNES), of Study Group 1, Telecommunications Standards Development Society, India (TSDSI). Very active in research, he has applied for 120+ patents in TCP, IP/MPLS, Ethernet, DWDM and LTE technologies. He has been contributing to standards since 2008 at SDOs like IEEE, ITU-T, WiMAX Forum, 3GPP, TSDSI, etc. H Programming, inventing, and reading are his passions. Praveen Pani Praveen has a bachelor's degree in Electronics and Communication and is a registered Patent Agent. He has an experience of close to 10 years in IP, and has been a part of various Legal Process Outsourcing firms in the past. In his current role at Wipro, he manages the Patent Portfolio and is responsible for the filing strategy. He has a strong background in Patent drafting and has been trained by various US attorneys. Praveen heads the in-house patent drafting team and is responsible for mentoring, preparing patent applications and training. He has worked on several Telecom and software related inventions, and has been instrumental in starting up the in-house team, specifically, the patent drafting team. As part of this, he has set up processes and procedures for day to day Patent operations of Wipro.

15 PROGRAMME OUTLINE 23 rd Feb 2017: Sun-n-Sand (Bund Garden Road) Pune 24 th Feb 2017: Le Meridian (Opp. Bangalore Golf Club), Bangalore Registration: For Indian Delegates: INR 5000 Per Delegate For Foreign Delegates: USD 100 Per Delegate Please Forward the Delegate Fees with the following details: Name, Organization, Designation, Address and Contact Details along with the Cheque drawn in favour of "M/S IIPRD, to Mr. Tarun Khurana IIPRD E-13, UPSIDC Site-IV, Kasna Road, Greater Noida , UP, India. OR Transfer Funds at our Bank; details are as Follow: Bank Name: UCO Bank Bank Account Number: Bank Branch Name: Greater Noida Bank Address: G N Shopping Plaza, Plot No.S-7/1, Site-IV, Kasna Road, Greater Noida. MICR Code: IFSC Code (Local Vendor): UCBA Name of the Account Holder: M/S IIPRD FOR ANY QUERY CONTACT: For Pune Mr. R Srinivasan, (M): , Srinivas@iiprd.com, iiprd@iiprd.com Ph: / / , Fax: For Bangalore Mr. Ankur Sehgal, (M): E mail: Ankur@khuranaandkhurana.com Ph: , Fax: