Intellectual PROPERTY

Demystifying IP

Knowledge of intellectual property is essential for its effective usage to realize the maximum potential of the technology solution or idea or innovation. Although a thorough learning of IP would be ideal, the comprehensive understanding of it may be logistically impossible for everyone. In fact, the extents of knowledge requisite for various kinds of professionals vary depending on the level of involvement.

"Why be IP AVANT?"

Intellectual capital is recognized as the most important asset and is the foundation for the market dominance and continuing profitability of many of the world’s largest and most powerful companies. A strong and valuable intellectual capital can be obtained only when IP is used to guide technology and business development all the way.

SPIRIT, BODY & INTELLECT OF XELLECT IP SOLUTIONS

On April 28, 2008 in General

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Xellect IP Solutions is the brain child of its founder and Chief Executive Officer Rachna. An electrical engineer by education (graduated from IIT Roorkee in 1993), she got involved in intellectual property matters very early in her career. Her first job was with Confederation of Indian Industries (joined in 1993), where she was assigned the task of building and leading the Technology and IP initiative, and a team associated with it. In the context of Indian industries, this was at a very early time, considering India was still debating whether to ratify the IP treaties, WTO, GATT etc. Quite a visionary career move in many of her peers’ eyes indeed!

IP being a completely new field in India, she sowed the seeds of intellectual property in the minds of Indian public, and patiently watered it, waiting for the trees of intellect to grow and bear fruits- a slow process requiring extreme patience and diligence. Also, since IP field was in its nascent stages then, trained personnel were very difficult to come by then. She being the bright young star with a wonderful open mind, was sent to many training sessions and workshops conducted by WIPO and others. She also attended many inter-governmental training programmes conducted by JIII in Tokyo, Japan, and CEIPI, in Strasbourg, France.

During her tenure at CII, Rachna performed the tasks with alacrity and panache. She has been instrumental in conceptualizing and organizing several IP initiatives, embodying the role given to her. She organized several issue-based IP initiatives across industries, and across the country in an effort to increase the awareness- a monumental task in itself. In doing so, she set high standards for all those following her in this field. Indeed, all those attempting to continue in the path trailblazed by her find that the practices and standards she set back in the days are the best practices and the highest standards by which others measure themselves.

Once she had gained the relevant knowledge and experience, she quickly became the resource person for conferences conducted by leading IP related organizations such as WIPO. She also led an initiative to provide advisory services to companies, especially on the use of IP in building R&D and business strategies. A very novel and quite futuristic idea, once again, when taken in the context of the time frame and mindset in India. This concept was embraced by a few companies immediately, who now find themselves in the forefront of technology, while all others- indeed the entire industry- are finding themselves gravitating towards adopting such a model. Of course, it goes without saying that she represented the CII (and consequently all the Indian industries) at meetings involving Patent Law Treaties, and the like, and providing the voice for their views and opinions, thus playing a significant role in shaping the policies and laws that are in effect today.

Rachna spent a little over 7 years working on policies through CII, representing it in forums, presenting views and ideas, and giving shape to the rapidly changing Indian social, cultural and legal face. She conducted herself with her characteristic nonchalance (although the impact of her work felt by the industry, and indeed the society, was momentous), with a straight face, taking everything in stride, not weighed down by the enormity of anything. She had also passed the Indian patent agent certificate exam.

Following this, Rachna made another bold move. Having been on the policy and issue side of IP matters for so long, she decided it was time to do more hands-on work, developing and protecting IP for legal entities, be it individuals or corporates. She was a very obvious (and quite an easy) choice for the management from a pool of applicants when GE Research Centre in Bangalore decided to build its IP team. Her immediate new assignment included drafting and prosecuting patent applications to be filed in the USPTO. This meant that she had to learn the art of drafting this techno-legal document, which further involved the learning the technical aspects of invention. She was mentored by several US patent attorneys in this regard. Once again, her alacrity, nonchalance and intelligence were on display here. Organizational requirements such as Six Sigma certification- that involved passing an exam and completing a project- were completed with consummate ease within the prescribed time limits set by the management.

Being the first member of the IP team there, she was also in-charge of building an IP team as per the requirements of the diverse businesses and the Global Research Centre allied with the businesses. This was a considerable effort, but her unique eye for spotting talent made it easy. Within three years, the team grew to 40, and was ready to be split into further sub-teams. Her talent spotting ability once again was used to spot leaders for the new sub-teams.

Also during Rachna’s tenure, a new breed of IP professionals called IP analysts were sought and hired. These new kind of professionals were hired specifically to search and analyze the voluminous amount of patent literature that is available. The “IP Analysts”, as they were referred to, became the backbone of the IP team, and provided valuable support to the research and business teams in focusing research work, obtaining adequate protection, enforcement of patents, etc. Currently, the analysts outnumber the patent agents (those involved in drafting and prosecution) by about 3-to-1.

Ever the team player, during the course of expanding the team, Rachna was continuously drafting and filing patent applications and office action responses in a timely manner to fulfil team commitments, something the management and the attorneys appreciated very much (quite regularly in fact, as it was frequently mentioned in meetings). The attorneys found her a delight to work with, and also found her to be a key intermediary to work with some other team members, as she was quite adept in handling personalities as well.

The mentoring by attorneys didn’t stop with patent drafting and prosecution. She was given adequate training and support in portfolio management, IP auditing, patent maintenance, legal communication protocols, and so on. She imbibed all this knowledge with extreme ease, putting all this into use immediately with the research teams and businesses she was supporting.

While the IP team was expanding at a phenomenal rate, the talent being brought in to the team was largely technical in nature, and most of them did not have the requisite techno-legal or legal background. Rachna was also instrumental in setting up training processes by working with the US attorneys to get the new incumbents up-to-speed to perform their job right. At this point, her original notion that teaching was one of her passions was reinforced. She, along with another colleague, proceeded to set up an internal training course geared towards preparing those interested to take the Indian Patent Agent Exam. She also played a major role in setting up other internal training modules and sessions.

Rachna brings to the table her core technical strength in Electrical Engineering, along with all the allied engineering knowledge. Her patent drafts are well received, not just by attorneys and inventors, but, in instances, examiners as well. Her office action responses are silky smooth in conveying the message. The appeal briefs and appeals filed are still being referred to by newbies in the field.

After another 6 years at the helm of a large IP team in a large multinational (the team by now had grown to over 80 strong), Rachna caught the entrepreneur bug. In August 2007, she launched her own firm Xellect IP Solutions, with the able assistance of another colleague from GE. In this endeavour, she brings together her entire past experience that includes dealing with the policies and issues, and the use and management of intellectual property in a corporate environment. This unique combination gives her special insights into the working of two sides of a coin, and bridges them beautifully to availing clients.

Drafting patent applications and office action responses still excites Rachna, much like the new transformer toy does her five year old son. She covers technical areas that include all engineering sectors, including IT, mechanical, electrical, electronics, and has picked up skills in writing Industrial Designs as well. She can further tune a patent application to desired jurisdictions, as she knows despite the seeming uniformity of laws across the world, the subtle differences in the interpretations will loom large when dealing with patent applications. This is a clear indication that she understands every last subtlety and variations of the different patenting systems in the world.

She also realized that the most important industry sector in India that involves a lot of IP activity is the chemical, pharmaceutical, biotechnology, biosciences sectors. Recognizing the need to fill that role to position Xellect IP to provide services to that sector, she ensured that her team member must have qualifications requisite to fulfil that role. The talent-spotter in her saw this in her colleague, thus ensuring that Xellect IP will be well placed to serve that sector too.

But she derives tremendous pleasure watching young and open minds fill it with this new found knowledge. Further, having built a large team, and training them, she decided that Xellect IP will also focus on assisting clients in the hiring of talent, and training them to get them up-to-speed with the job requirements. Clients availing or showing interest in such services include corporate IP teams, law firms, foreign law firms looking to get outsourcing work done here, IP service firms.

Hailing from the process-oriented organizations CII and GE, she appreciates the value of processes in assisting the smooth operations inside a company (value of processes inside an organization is much greater when dealing with outside parties like law firms, which she realized very early, but slowly the world is coming around to it). So, as first order of business, she decided as the boss that one of the core competencies of Xellect IP would be setting up in-house processes. This rather unique service is being availed by clients, and well-appreciated when provided.

Most corporates also want to be on the edge of technology and always like to squeeze every last drop of asset available to them. This, in IP terms, would mean managing their IP portfolio, conduct IP audits, and valuate existing IP. Having had considerable knowledge and experience in doing all of this, Rachna’s ideas, inputs and thoughts are always well received, and indeed actively sought by clients.

Rachna is well-known in the IP circles around the country, and she is a sought after speaker in many forums. Her popularity is evident from the number of people who recognize her in conferences and forums, and single her out just to get some words of wisdom from someone so experienced and well-versed in the field.

Rachna, besides all that she has to do to keep her clients happy, is committed to the IP community as well, and is looking to provide sometime back. She has played a key role in giving the IP field its current shape, anthe impossible-to-tire-person that she is, wants to do more (if anything, she is more energetic and enthusiastic than before). She has initiated a forum for IP professionals in the country (named Intellectual Property Rights Association India or IPRA India), for which she has brought together some top professionals involved in the IP field for a number of years. She has also led the initiative in putting together a certificate course in IP, specifically geared towards IP professionals involved in patent search, analysis, preparation and prosecution. Yet again, the task of identifying faculties, venues, logistics, marketing etc. fell upon her, which she has been dealing with consummate ease. She is currently working with some of the leading academicians and industrial partners to develop benchmarking methods for measuring the utilization of intellectual property by companies- a task that is not easy for sure, one that only someone with her superior knowledge and perseverance can hope to undertake and achieve.

Rachna embodies mind, soul and spirit of her brain child Xellect IP Solutions, and indeed IP itself. Her vision and mission for this endeavour will ensure its success, while her knowledge, drive and diligence towards the field of Intellectual Property will ensure that intellectual property will remain in the forefront of professionals in all other technical fields. The IP community, both in this country and outside, recognizes her selfless and tireless efforts put in pursuit of greater ideals.

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  6. bhaskar samrit Said,

    i am preparing for the patent agent exam
    but very confused with the drafting and interpretation part.
    please suggest some ways by using which i can clear my doubts
    do you provide training in ip?

  7. admin Said,

    Bhaskar,

    You need to memorize the sections and remember what each refers too. Unfortunately, the Patent Agent Exam aims to test the memory rather than real understanding and application is underlying principles. Most of these aspects become clear once you are in Practice. Read the Act and Rules at least three times. Go through the previous years exam papers. We do plan to have a training for this to help candidates prepare. I will revert to you when the dates are finalized.

    Warm Regards,
    Rachna

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