Patent Licensing

Patent licensing is the right given to others to use one’s patented invention for profit. A patent gives a patentee the right to exclude others from using, making, selling, offering to sale or importing of the invention in specific jurisdiction. Patent licensing from an inventor’s point of view is making use of his invention for monetary purpose.

Licensing a patent for using it in interested party’s products for business exists from several years. Patent licensing takes place in scenarios where the licensee believes that licensing a patented technology from the patentee will reduce the research and development cost of the organization instead of developing similar technology investing heavily on R&D. Other scenario includes where the patentee identifies potential licensee and offers willful license in which the licensee can utilize the patented invention to implement the patented technology in their product(s). Patent licensing may otherwise take place in order to avoid infringement law suit.

Patent licensing may be exclusive or non-exclusive. The type of licensing will be dependent on the terms and conditions up on which the patentee and licensee agrees during the negotiations of the license terms. Exclusive patent licensing may take place between patentee and licensee wherein only the licensee can use the patented invention with the terms agreed upon during negotiations. Non-exclusive patent licensing may include licensing the patented invention to multiple licensees under different terms and conditions between patentee and each of the licensee. Other aspect in patent licensing includes cross license agreements in which both parties license each other patented technology in order to use the patented inventions in respective products and to minimize the licensing costs.

Choosing which patent to license and to which party to license may depend on the available technologies or value which the patent can generate when implemented. The patentee should decide on what type of licensing deal he should agree with the licensee. The patentee shall decide whether to assign all the rights to licensee (selling of patent), provide exclusive license or consider multiple non-exclusive licenses to several licensees depending on patent’s level of invention.

Major corporations such as Qualcomm, Intel, IBM, Microsoft, Nokia, Motorola, Ericsson has huge patent portfolios in various technologies. IBM earned more than $3 billion over the years by licensing patents to different companies. Qualcomm, market leader in telecommunication licensed its patented inventions to large number of corporations in telecom industry. Latest patent licensing agreements include Microsoft signing patent license agreement with almost all of smartphone manufacturers which use Android operating system.

Another aspect of patent licensing is the drawbacks in certain situations where the patentee may get less in royalties by licensing the patented invention considering the resources utilized in developing the invention due to poor licensing strategies used during the time of license agreement. In another scenario patent licensing may cost more to licensee where the patented invention becomes obsolete after years of licensing and the licensee may have to pay royalties if the terms are agreed for longer duration than required.

Patent licensing should be considered in the cases where the technology is available rather than reinventing the available technology by spending huge on R&D. Cross-licensing would help the interested parties in developing products by utilizing respective technology. The value of the patent shall be calculated depending on the impact, the patented invention brings when implemented in the product. Alternate technologies and future implementation of patented invention should be evaluated before signing license agreement.

Author, Chandrasekhar is Manager and Patent Agent at IP Astra

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Protection of Architectural Works

“Architecture is not based on concrete and steel and the elements of the soil. It’s based on wonder.”  Daniel Libeskind

Recently, a few friends and I were having an interesting discussion the changing skylines of several countries – how things were, are and were likely to be. The talking point of the discussion was the novelty and ingenuity of architectural design unique to certain countries. For instance, the ancient pyramids of Egypt, the imperial palaces of the Ming dynasty, the architectural genius of Charles Correa whose modern designs are an integral part of India’s architectural history – all the design and its three dimensional interpretations were works of art. The imagination, time, effort, and resources required by architects in all these cases are astounding. Now, all this admiration made us wonder whether architects could protect their “works of art” from infringement, or from “copycats”? We delved into details to understand the law. After delving the details, the answer, hands down is a big yes. With this post, we thought to throw some light on how the structure of an architectural design can be protected.

As we all are aware, different countries have different laws. Generally, copyrights and trademarks are registered for safeguarding the interests of the architect/designer. These laws acknowledge the significant time, effort and money spent by architects. This article provides a general and basic idea of the laws enacted in the United States of America and India for the protection of artistic works of art.

For the sake of general understanding, an “architectural work” is a design exemplified in any tangible medium of expression, including a building, architectural plans, or drawings. Architectural works in the material form such as buildings are perceived as cultural symbols, functional spaces and as works of art. Like anything in its nascent stage, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers are unaware of how to protect their building designs. The procedure of protecting works of art in the United States of America is different from the procedure followed in India.

So, how does Uncle Sam protect the designs or architectural works of architects? Basically, architects in the US protect their designs and the 3D manifestation of the design by registering the respective as copyrights. In the year 1909, the US congress enacted The Copyright Act of 1909. The 1909 act did not specifically mention architectural drawings or construction drawings, but copyright protection for “drawings or plastic works of a scientific or technical nature” was included. With the language, the Federal Court assumed that it meant architectural blueprint. Later, in 1976 the US Congress felt the need to specifically include architectural plans and drawings. The act is commonly referred to as the 1976 Act. However, the courts held that even the 1976 Act failed to protect the architectures right to build structures as depicted in the drawings.

In 1989, amidst all this confusion regarding protection of architectural works, the US joined the Berne convention for the Protection of Literary and Artistic Works. The Berne convention requires that its signatories provide the required protection for original architectural designs. At this point, the US congress sensed the urgency for a law that provides complete protection of architectural works, in both plans as well as 3D manifestation. On December 1, 1990, President George H.W. Bush signed the Architectural Works Copyright Protection Act (AWCPA) into law. According to the AWCPA, the list of copyrightable subject matter was extended to include architectural works under 17 U.S.C. § 102. The act provided a 2 tier level of protection for architects. Under 17 U.S.C. § 102(a)(5), the architect is able to protect the pictorial, graphic, and sculptural works. And under 17 U.S.C. § 102(a)(8), the architect is able to protect the design of the architectural work as embodied in the architectural plans.

In order to receive copyright protection of the architectural work, the architect should be able to comply with the requirements of “originality” despite the fact that the fundamental elements of architectural design exist in the public domain. Now, in case of copyright infringement, the district court conducts a two part test. The first part of the test takes account of the validity of the copyright at issue. Certificate of registration of the copyright is the prima facie evidence of the validity of the copyright in question. An unsaid yet understood rule is that the architectural work must exhibit creativity to be protected under AWCPA. The second part of the two part test is evaluating the copyright under a “substantial similarity” analysis. Based on the evaluation, the examiner has to evaluate whether the alleged infringer has access to the original architect’s work.

The United States also allows architects to register architectural works as trademarks under the Lanham Act. According to § 1301.02(c), “The three dimensional configuration of a building is registerable as service mark only if it is used in such a way that it is or could perceived as a mark”. On most occasions, a photograph is a proper specimen of use for a three dimensional mark. However, photographs of a building fails in showing use of the architectural design as a mark for services performed in the building by only showing the architectural structure in which the services are performed.  The specimen must show that the proposed mark is used in a way that would be perceived as a mark.

While this is how it works in America, India is a different case. Indian law provides protection to the architectural works under the uniform copyright law. The copyright law in India is governed by the Copyright Act of 1957 amended in 2012, and the Copyright Rules, 2013. The section 13 of the Copyright Act, 1957 enumerates original, literary, dramatic, musical, and artistic work, cinematographic films and sound recordings as eligible for copyright protection. The section 13 of the Copyright Act, 1957 states that, “In the case of work of architecture, copyright shall subsist only in the artistic character and design and shall not extend to process or methods of construction”.

Another significant point is that India is a signatory of the Berne’s convention of 1886, as well as the Universal Copyright Convention of 1951. By signing the conventions, an artist gets  protection for the architectural works (or for the matter of fact any literary and other artistic works) registered in other member countries to accord protection in India and vice versa.

To conclude, governments around the world are ready to recognize and protect artistic works. Failure to take steps in securing artistic works under intellectual property available in the respective countries would leave the architect with no legal remedy to claim his/her right over the architectural design or structure. In this highly competitive and frenetic world, ignorance is not ever going to be considered bliss.

The author, Perzeus Abhas, is a Patent Engineer at IP Astra