Origiin Newsletter

May 2012, Volume 2, Issue 13

May 2012 Volume 2, Issue 13 IN THIS ISSUE

What is in a name? ..1 Latest News...3 Patentalk4 Interesting patent of the month..6

What is in a name?
Santhoshi Basuthkar (santhoshi@origiin.com)

e all use the Internet day in and out

in our everyday activities, ever wondered what could be the possibilities of IP infringement in this wide Internet space? The foremost one is the Domain Name infringement. Domain Name is the address of the webpage that one uses to navigate on the Internet. It maps to a specific number such as Internet Protocol (IP) number that serves as the routing address on the Internet. Further, the Domain Name System (DNS) translates the Domain Name into IP number needed for transmission of information across the network. The Domain Name is the part of Uniform Resource Locator (URL) that directs the domain name server using the DNS to forward a request for the webpage. The Domain Name serves as a label that indicates the ownership and control of a resource. It has a specific naming convention and is divided into hierarchies. The top level indicates the geographic location or the purpose of its use, in example tulip.com, .com is the top level. Most commonly used top level names are .net (for network or internet related organisation), .edu (for educational institutions) and .org (for non profit organisations). Other top level domains such as .in (for India) and .uk (for United Kingdom) indicate the geographical location of the webpage. The Domain Name infringement most often occurs in the second level name. The second level names occur to the left of the top level domain such as, tulip in tulip.com. It maps to the unique IP address and hence no two identical second level domains can occur under the same top level domain name. However different domain names can be linked to the same DNS, thereby sharing of the internet servers is possible. Over the

EDITORS
Santhoshi Basuthkar Anita Kalia

CONTACT US
Origiin IP Solutions LLP #51, MSHS, 15th Main, Sector 4, HSR layout Bangalore Mobile +9198456 93459 +9198802 13204 Websites www.origiin.com www.origiinipa.com

Benjamin Franklin

Anyone who trades liberty for security deserves neither liberty nor security

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May 2012, Volume 2, Issue 13

years, Domain Name has become like a brand value or Trademark for a company/institution as its customers recognize the company name over the Internet by means of the Domain Name mentioned in the website. Registration of Domain Name can be done at any of the ICAAN accredited company. ICANN (Internet Corporation for Assigned Names and Numbers) is a non-profit organisation that manages the Domain Name systems and allocation of IP address space. The registration for a particular Domain Name is done on a first-come-first-served basis. Before registering, the availability of a Domain Name can be checked using Whois, a protocol that is used to query large databases of Domain Names and IP addresses. Once registered, the Domain Name is valid for a year, after which it can be renewed for about 10 years. Domain Name disputes could occur due to several reasons, some of which are: when the original registrant intentionally trades off the resemblance between the domain name and another famous trademark to cash on the reputation of the trademark holder, or, when there are more than one legitimate users of a Domain Name with no particular intention of trade off the other and have a valid reason to use a particular Domain Name, or, when certain pirate companies which register famous trademarks as Domain Names with the only purpose of selling the Domain Name to the corresponding trademark holder. In order to counteract such disputes ICAAN has framed the Uniform Dispute Resolution Policy (UDRP) under which a trademark owner can initiate an administrative procedure to challenge the existing domain name. The classic case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme Court of India on the issue of domain name protection. It dealt with two businesses employing variations on the same mark ("Sify) in their respective domain names. Satyam Infoway Ltd alleged that Sifynet Solutions has intentionally registered the domain name Sify that is confusingly similar to the one owned by it. It claimed that, in 1999 it had registered several domain names such as sifynet.com, sifymail.com with ICAAN and WIPO for the purposes of its business. It asserts that the word Sify which is an amalgam of its name Satyam Infoway has gained substantial goodwill in the market. Meanwhile, in 2001, Sifynet Solutions started using the word Siffy as part of the domain names such as siffynet.com and siffynetnet under which it carried on internet marketing. Thus Satyam Infoway alleged Sifynet Solutions was attempting to pass off its services by using a deceptively similar word as part of its domain name and thereby creating confusion in the minds of the customers. Sifynet Solutions placed its opposition stating that unlike trademark, registration of a Domain Name did not confer an intellectual property right in the name and a Domain Name is merely an address on a computer which allows the communication to the customers. Since there was no specific law to clear the dispute of domain name, the High Court decided to apply the trademark to redress the dispute. The High Court responded and held that domain names could be adequately protected under the doctrine of passing off referred to in the Indian law of trade marks. This doctrine was then applied to resolve other domain name disputes such as Yahoo Inc v Akash Arora, 1999, Rediff Communication Ltd. v. Cyberbooth & Anr, 2000, Titan Industries Ltd v Prashant Kooapti etc. Thus the registeration of a domain name has its importance similar to the registeration of a trademark. It aids in recognition of an individual/community/company in the vast cyber space. There is also an edge when the company brand name and the domain name are similar, it aids in adverstising the company on the Internet. However care needs to be taken not to infringe any of the existing domain names.

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May 2012, Volume 2, Issue 13

LATEST NEWS Patents ON SALE! The US internet firm AOL sold about 800 patents to Microsoft and cashed in revenue of $1.06 billion. Shares rose to 4% on hearing the results. The move comes as activist shareholder Starboard Capital, which owns around 5.2% of AOL shares, is mounting a proxy campaign to win seats on AOL's board. The firm has criticized AOL for not doing enough with its intellectual property and for investing too much in online content that isn't generating enough advertising revenue. AOL thus plans to handover the revenue that was generated to its shareholders. AOL dint detail the patents sold, however some external resources said that the patents include the Intellectual property on Netscape, although AOL will retain the Web browsers brand name ad operating system. Consequently, Microsoft has announced a deal to sell a block of patents obtained from AOL to Facebook for $550 million in cash. Under the terms of the new deal, Facebook will take ownership of approximately 650 AOL patents and patent applications plus a license to reminder of the ex-AOL patent applications that Microsoft purchased. Upon closing of this transaction with Facebook, Microsoft will retain ownership of approximately 275 AOL patents and applications; a license to the approximately 650 AOL patents and applications that will now be owned by Facebook; and a license to approximately 300 patents that AOL did not sell in its auction. Trademark on a Pocket? Vanity is a mall-based clothing chain; a denim retailer based in Fargo, is asking a federal judge to settle a trademark infringement dispute it is currently in with Levi Strauss & Company. Early his year, Levi Strauss sent a cease and desist letter to the Fargo-based Vanity, claiming the pocket design on the retailer's jeans was "confusingly similar" to Levi's brand of jeans. Vanity responded to the letter by filing for declaratory relief against the Levi Straus stating that the "V" design on the back of its jeans is visually distinctive from Levi's jeans and that Levi Strauss does not have the right to prevent Vanity from using a stylized version of the letter 'V' in connection with its pocket designs. It also claims that it has been using the "V" design in its trademark since the mid 1950's. However, in the cease and desist letter to Vanity, trademark attorneys for Levi Strauss assert that the similarity in the pocket designs "will create a substantial likelihood of customer confusion as to the source of Vanity jeans." As a result, Vanity is seeking an order from a federal judge declaring that its pocket designs are not confusingly similar to the Levi's brand. Additionally, Vanity is requesting that the judge issue an order precluding Levi Strauss from suing Vanity for trademark infringement.

Origiin Newsletter

May 2012, Volume 2, Issue 13

PATENTALK: Dr. S.Ramamurthy

This section is an initiative by Origiin to introduce innovations from various inventors and valuable expert opinions on protection, exploitation, of Intellectual property by Intellectual Property experts to provide inspiration to the readers and also make our readers aware about the emerging technologies, products and innovations. This section also aims at bringing out the importance of patent protection and the way such innovations are make difference in evolution of scientific progress in the country. In this issue, we are introducing Dr. S. Ramamurthy, Scientific Advisor at Controller General of Patents, Trademarks and Designs. He also heads the Knowledge Management, Centre for Emerging Technologies, Jain University Bangalore. He has been the inventor of 5 patents so far. Below is his expert opinion on essential things about IP protection for a startup company. Designation and company name: 1. Scientific Advisor at Controller General of Patents, Trademarks and Designs. 2. Professor & Head, Knowledge Management at Centre for Emerging Technologies, Jain University Here is an excerpt of their interview by Origiin Origiin: 1. What are the IP protections that one needs to be aware of before starting a new company? Dr. Ramamurthy: A new company before starting the business has certain plans or projects. The company may need to outsource some of the work to other agencies for execution of the projects. For example, a new product has to be mass produced, company has all the inputs such as drawings, business plans, securing and handling confidential information, data security, know-how & method of manufacture but would like to outsource manufacturing to an external company. In such a situation, the intellectual property of the company such as patents, copyrights, trademarks, business plans, trade secrets and designs have to be protected before any discussion takes place with an outside agency. The IP protection is taken by signing a Non-Disclosure Agreement (NDAs) or confidentiality agreement with the external agency.. The details of the invention should be documented in a laboratory note book with dates and every important result should be signed before a witness. The Invention Disclosure Form should be carefully filled before a patent attorney is approached for filing a patent application. It may be worth signing a Non -Disclosure Agreement (NDA) with the patent attorney before the invention is disclosed. Patent only what is important. If patent office examiners or competing individuals or companies challenge your patent, the legal fees can soar. You must conclude first that you need the protection, and second that you will recover much more than your expenditure in additional long-term sales Origiin: What are the prerequisites that need to be taken care of before filing a patent? Dr. Ramamurthy: A patent is a form of industrial property which may be described as a monopoly right conferred by the state to an inventor to industrially and commercially exploit his invention for disclosing the details of his invention. The prerequisites that need to be taken care of before filing a patent are: (1) Novelty (2) Inventive step (3) Utility

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May 2012, Volume 2, Issue 13

The first criterion for an invention to be patentable is that it must be new product or a new process. The invention should not have been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent. Novelty means what is new and original, never seen or done before. The invention should involve a technical advance as compared to the existing knowledge. The second criteria for an invention to be patentable is that it should have an inventive step which makes the invention non-obvious to a person skilled in the art In order to ascertain whether an invention meets the requirements of an inventive step, a prior- art -search before submitting the complete specification should be conducted to ensure that nobody else has protected the same/similar invention before. The third criteria for an invention to be patentable are that it should be industrially useful. Origiin: What are the IP forms that a startup needs to protect and why filing for a patent is on first prority? Dr. Ramamurthy: For a start-up, patent, copyright, trademark, design and confidential information/trade-secret may be the most critical forms of IP and each of them needs to be protected appropriately. Filing a patent application in the Indian Patent Office is the first step towards securing a patent to your invention in India as it requires invention to be novel on the day of fling. To file a patent application, a set of forms has to be submitted to the patent office. The forms can be submitted online (https://www.ipindiaonline.gov.in/on_line/) if you have a class 3 digital certificate. Alternatively, one can send true copies (hard copies) to the patent office. Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai. The patent application has to be filed in the appropriate office based on your/your companys location Origiin: What are the long term benefits of filing a patent? Dr. Ramamurthy: Filing for a patent is similar to planting a small plant today and reaps the benefits after several years. If you do not protect the invention by a patent today, somebody else will seek the protection on the invention based on your idea. After filing and getting granted after examination takes several years, but you can exploit the invention by means of a license /assignment after application for a patent is filed. One may have various paten strategies, offensive or defensive, governed by the business goals of the company. Origiin: How to tackle the critical issues of disclosures in a patent? Dr. Ramamurthy: The critical question in a patent disclosure is that how much of the invention has to be disclosed? While the legal requirement for granting a patent is that the patent will be granted to whatever is disclosed, the business aspect requires some know-how to be kept confidential. The claims should be drafted in a broader sense while the actual process details or device details are kept confidential or trade secret by know-how When the patent commercialization takes place, the know-how document will be given to the licensee after the license fee is received and License agreement is signed, which includes Royalty clause also. Origiin: What is your experience as an inventor and patent holder Dr. Ramamurthy: Inventions do not happen suddenly but emerges as a spin off from scientific experimental research. Prior art search is the starting point, which motivates for new improved inventions. In inventions such as new air foil bearings for high speed applications, most of the time and money is spent to build up experimental facilities and further experimentation by varying parameters such as materials, cheaper methods of manufacture and other variations in performance parameters. Patents were filed in India, US, Europe & Japan during emerging phase of research which helps in getting industry partners and further licensing. The development took place in several stages like prototype, pilot scale testing and actual field testing in machines for more than one year. Final acceptance test is the result of several years of hard work of team of scientists. My passion for IP made me to motivate other scientists to get 30 patents for the organization in four years. Dr. S. Ramamurthy can be contacted at murthynatural@gmail.com or santhoshi@origiin.com To post your story, write to editor@origiin.com

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May 2012, Volume 2, Issue 13

INTERESTING PATENT OF THE MONTH

TV mute finger ring

United States Patent Application number : 10/38.828 Inventor: William P.Murray JR., San Rafael Publication number: US 2003/0206393 Publication date: Nov 6, 2003 Abstract: TV Mute Finger Ring with a hollow C shaped finger ring housing. The housing contains the standard electronics and IR transmitting LED associated with activating the mute function of a standard TV. The housing also contains a battery type electrical power source. The C shaped ring housing has a loop type fastener strip attached to one end of the C shape and a hook type fastening panel affixed to the opposite end of the C shape so that said loop type fastener can removably attach to said hook fastener thereby forming a full ring that can be worn on the user's forefinger. The C shaped housing contains a momentary on-off switch and attached outwardly accessible switch cover located in a position where the user's thumb can easily reach said switch cover. The IR transmitter is covered by a transparent plastic lens that is flush with the outer surface of said C shaped housing. The plastic lens is positioned so that said lens and said IR transmitting LED are pointed outwardly in the general direction of said TV

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