Dr. Feroz Ali
Intellectual Property Law Scholar, Founder of Techgrapher.com
Intellectual property expert with decades of experience in litigation, consultancy and teaching. Former IPR Chair Professor at Indian Institute of Technology Madras. Founder of Techgrapher.
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Areas of Expertise
Dr. Feroz Ali spent a large part of his professional career in contentious patent proceedings before the Patent Office, Intellectual Property Appellate Board (IPAB), High Courts and Supreme Court. Be it pre-grant or post-grant oppositions, revocations before IPAB or patent infringement suits before the higher courts, Dr. Ali’s work covers different fields of technologies across industry sectors. Dr. Ali was recently involved in the Monsanto v. Nuziveedu case (on gene patents) before the Supreme Court of India.
Knowing how to challenge patents can be an asset when it comes to defending objections from the Patent Office during prosecution. Dr. Ali’s work in patent prosecution involves cases which he refers to as “troubled” prosecution: instances where the patent applicant is faced with strong objections from the Patent Office or a pre-grant opposition or a reasoned rejection which needs to be appealed before the IPAB. Dr. Ali advocates the problem-solution approach to drafting patent applications and follow-up amendments, a tested method to get over prior art and other objections commonly raised in the First Examination Report. Dr. Ali argued the landmark case, Yahoo Inc v Controller of Patents, which he considers to be a typical case of troubled prosecution that resulted from a rejection from the Patent Office.
MANAGING INTELLECTUAL PROPERTY
Software is eating the world and with Artificial Intelligence, Big data, Blockchain, Cryptocurrency and Internet of Things (IoT) heavily relying on software, there has not been a time when protecting software made more sense. But how do you protect software? Does the Indian Patent law offer protection for software? Is copyright the right way to protect code? Can branding through trademarks help? Not just software, how you manage the life of your products and migrate value from limited life to unlimited life intellectual property can be critical in any knowledge-based industry. Dr. Ali has consulted companies on managing their intellectual property focusing on the value articulation framework.
SETTING UP IP CENTRES
As the first Intellectual Property Rights Chair at Indian Institute of Technology Madras (IITM), Dr. Ali was exposed to the challenges faced by Higher Educational Institutions in managing their intellectual property. His tenure as the IPR Chair coincided with the three years where IITM was ranked as the No. 1 engineering institute by the National Institute Ranking Framework (NIRF), an honour that came its way for a multitude of measures including the way it managed its patents. Dr. Ali has helped institutions set up their IP Centre and frequently address academia on issues relating to intellectual property.
All (I mean each & every) videos by Prof. Feroz Ali Sir, all Webinars quick overlook on all Sections by Feroz Sir gave me confidence of revising the whole book in a glance, time management for P-II, "Patent Drafting hacks" video provided tips on tedious task of drafting. 1) Patent Law Handbook is handy with fresh look. 2) It saved my time & made my studies easier for cross-referencing of Section with Rule & Form No. 3) Case laws helped me to have a quick look for clear understanding of dispute with decision over a pile of huge info on internet. 4) Webinars boosted my moral all the time & provided number of tips on time management, improving legal writing skills and the most important is kept me calm during PAE preparation (since I had a fear that I'm studying alone in UK & unable to discuss with fellow Indian friends due to time gap. I stopped [rather ignored] to read WhatsApp messages from other PAE groups)
Pallavi Rahul KadamStudent
Dr. Feroz Ali's explanation of the Patent Law with Sections and relevant rules made me to grasp the law thoroughly.
M BalasubramaniamMangalam Associates
Prof Feroz Ali's Sir Explanation of the Patent Act on Video was very helpful. I could listen to it whenever and wherever on Repeat mode. Thanks very much sir.
Saighiridhar V VSr Director at startup
I am the founder of a technology start-up. My start-up has come up with new inventions which we are seeking to protect. We find the process of patenting expensive. Though we would like to protect our inventions, we are not sure about the benefits of filing patents. How does a start-up manage its intellectual property in a cost-effective way?
Dr. Feroz Ali, Founder of Techgrapher.com answered:
A patent is a 20-year investment which starts off by filing a patent application, which eventually matures into a granted patent that needs to be kept alive by paying annual renewal fees. A granted patent allows the patent holder to stop others from doing things covered by the patent, i.e., the patent gives the patent holder an exclusive right. Before filing a patent, you have to make a cost-benefit analysis on the resources and time that you will expend in protecting the invention and the revenue you will be able to earn through the patents. For start-ups, the revenue could be in the form of future investments. Start-ups have to wisely manage their resources when it comes to filing patents. If they have many inventions in the pipeline, they will have to take a call on prioritising the inventions that need to be protected first. Even for the inventions that the start-ups feel should be protected by a patent, due-diligence needs to be done. Due-diligence can cover two aspects, the strength of the invention (compared to existing knowledge) and the industry practices (compared to what others have patented).
The strength of the invention refers to the ability of the invention to receive patent protection after official scrutiny by the Patent Office. To determine the strength, the invention needs to be compared with what has gone before in that field of knowledge. The Patentability Search Report can determine whether the subject matter will merit a patent, i.e., the subject matter is not an excluded matter and that it satisfies the requirements of novelty, inventive step and industrial application. Once a patentability search report is procured, which usually costs much less than the charges for drafting and filing a patent, a start-up will know the chances of the application materialising into a granted patent. This is important as start-ups need to make their investments carefully. Though some start-ups may file patents to boost their valuation, they should understand that there are tools by which investors can determine the strength of the patent covering the invention.
The industry practices is another key information that start-ups need to know before venturing into filing patents. This can be done by procuring a Patent Landscape Report to determine what others have done and to see the overall patenting activity in their field. The amount of players and the number of patents in a particular field of technology could itself be an indicator of how the players in the field consider the significance of patent protection.
Start-ups should ideally team up with service providers who can do the due diligence and the patent filing at an affordable cost. For this, the start-ups should identify service providers who will offer the due-diligence as a part of the patent services package. The danger of not doing a due diligence could result in costs that the start-up may never be able to recover.
I am a professor from an engineering college who is in charge of Intellectual Property activities. Our colleagues and research students do not engage in serious research and as a result we find that there may not be anything that comes out of our institution which can be patented. But we feel the pressure of focussing on intellectual property and we conduct workshops and awareness programmes. How do we make our colleagues and research scholars focus on quality research?
Dr. Feroz Ali, Founder of Techgrapher.com answered:
Intellectual property rights, like patents, protects the output of research. The input for research are the resources that go into it, what the industry refers to as Research and Development costs (includes people, funds and facilities). The innovative potential of an organisation can be measured by looking at the investments made in research and by looking at the output of research, such as research publications, patents, incubated companies that result for research etc. For organisations that are not able to make substantial investments into research (the input part), the focus should be on building a culture that facilitates and encourages research. Higher Educational Institutions (HEI) can benefit from mentoring programmes where young faculty members and research scholars can brainstorm with established academics from other institutions and gain from their experience. HEIs should focus on inviting accomplished academics and interacting with them. Institutional mentoring is important as well, as we can see in the case of the old IITs mentoring the new ones. It’s not surprising that some of the new IITs have figured conspicuously in the National Institute Ranking Framework (NIRF) despite being established only a few years ago.