Patent Practice in India - A practical approach @MSRIT, bangalore

Patent Practice A Practical Approach

@ M S Ramaiah Institute of Technology, Bangalore

Vikram Pratap Singh Thakur

7 April 2023 © 2012 Brain League

Patent in Business Motorola – Google

Deal: 12.5 Billion Patent Portfolio Value:

approx. $4billion (33%)

RIM Company’s Valuation:

$2.5 Billion Patent Portfolio Value: $1

Billion (40%)▪ If it continues to

manufacture/ sell its phones

Kodak Company’s valuation:

$576million Patent Portfolio: $3 Billion

Nortel- Apple, RIM, Sony, Microsoft (for Nortel’s Patent Portfolio) Portfolio Valuation:

Approximately $1 Billion Deal: $4.5 Billion (450%)

Note : Figures based on data generally available on the internet.

7 April 2023 © 2012 Brain League

Patent in Business

IBM, for 19 consecutive years is said to have the highest Patent Portfolio in the United States, followed by Samsung, Cannon , Panasonic, Microsoft, etc

IBM is said to approximately garner a whopping $1billion from its Patent Portfolio every year by licensing the same.

Google deal

7 April 2023 © 2012 Brain League

Patent add value – Importance of patents Strategic business advantage

Preventing competition from doing same stuff

Increase valuation of an organization

Bring licensing revenues

7 April 2023 © 2012 Brain League

Patent related considerations

1. Obtaining patent rights

2. Avoiding third party patent infringement

1. Obtaining patent rights

7 April 2023 © 2012 Brain League

Obtaining patent rights

Filing of application for patent What inventions to file?

Publication – rights start Grant – rights are enforceable

Pre-filing recommendations Check for patentability

7 April 2023 © 2012 Brain League

Patentability criteria

Subject matter

Utility

Novelty

Non-obviousness / Inventive step

Specification

7 April 2023 © 2012 Brain League

Subject matter Inclusion list

Product Process

Exclusion list Sec 3 and 4

Not patentable examples Perpetual motion machine A new theory Sweet lime juice Wrist watch with compass

7 April 2023 © 2012 Brain League

Utility / Industrial applicability Industrial application

Capable of being made or produced in an industry

Present use

Relatively one of the easiest requirement to fulfill.

7 April 2023 © 2012 Brain League

Novelty

New in light of what is already existing

Rule - compare one prior art at a time

7 April 2023 © 2012 Brain League

Inventive step / Non obviousness Inventive step

Technically advanced or has economic significance; and

Not obvious to a person skilled in the art

Person skilled in the art

7 April 2023 © 2012 Brain League

Cont... Problem-solution approach

Identify the problem Proposed solution obvious in light of existing ones Secondary indications▪ Commercial success▪ Copying▪ Praise by experts▪ Unexpected results▪ Long felt need

Rule - combine all relevant prior art references

7 April 2023 © 2012 Brain League

Specification

Meet all the guidelines specified in the act

Written description Describe in a detail manner

Enablement Capable of being worked independently

by a person having skill in the art

7 April 2023 © 2012 Brain League

Patentability criteria met Patent procedure

followed Publication Examination Grant of patent

Follows All rule for grant

Fig: Kalyan’s Patent filter model

7 April 2023 © 2012 Brain League

Practical Perspective – Patent search, drafting and filing All requirements can broadly be classified under 3 stages

Stage 1 – Pre-search stage Subject matter Utility

Stage 2 - Patentability assessment search and analysis Novelty Non-obviousness

Stage 3 - Application drafting and filing Specification▪ Written description▪ Enablement

7 April 2023 © 2012 Brain League

Example

Invention Chair with wheels

Prior art Chair Wheels for toys

Patentable?

7 April 2023 © 2012 Brain League

Example

Invention Voice mailbox

Prior art Telephony Voice recorders

Patentable?

7 April 2023 © 2012 Brain League

Example Claim 1: A water bottle cap, said cap comprising:

a base defining an opening, said base having a locking mechanism configured to engage said base with a bottle;

a water outlet pipe adapted to be received inside the opening, said pipe attached to said base; and

a closure member hingedly engaged to said base, said closure member adapted to move between an open position, where the closure member moves away from said pipe, and a closed position, where the closure member moves towards said pipe and abuts said base.

7 April 2023 © 2012 Brain League

Cont… Prior Art 2 discloses a water

bottle cap having a base. The base of the water bottle cap defines an opening. Further, a closure member is hingedly attached to the base. The closure member moves between an open position, where the closure member moves away from the opening of the base, and a closed position, where the closure member moves towards opening of the base. The projection of the closure member, in the closed position, extends inside the opening and thus seals the opening.

Prior Art 1 discloses a water bottle cap having a base with an opening. Further, a straw adapted to be received inside the opening is disclosed. The straw extends inside the bottle. The straw has a closure member just enough to close an opening defined in the straw. Further, the straw has a sealing mechanism which seals the opening defined by the base.

7 April 2023 © 2012 Brain League

Novelty and Non-obviousness?Invention Prior art 1 Prior art 2Base √ √Water outlet √ XClosure member X √

7 April 2023 © 2012 Brain League

Patent Rights

Rights of patentee Make Use Sell Offer for sale Import

Negative rights

Infringement

2. Avoiding third party patent infringement

7 April 2023 © 2012 Brain League

Infringement concepts

Infringement when? Exclusive rights

violated

Scope of rights? Defined by claims▪ Claims define the metes

and bounds of the invention

Infringement factors Territorial Term Claims

7 April 2023 © 2012 Brain League

Infringement types

Direct infringement Literal infringement Doctrine of equivalence

Indirect infringement Contributory infringement Induced infringement

7 April 2023 © 2012 Brain League

Infringement check

Claim construction

Comparison

Claim by claim - element by element analysis

7 April 2023 © 2012 Brain League

Parts of a claim Preamble

Transition phrase

Body

Claim I claim

A ceiling fan comprising of a base connected to a solid rod, which in turn is connected to a rotor with three wings.

7 April 2023 © 2012 Brain League

Claim construction A ceiling fan

comprising of a base connected to a solid rod, which in turn is connected to a rotor with three wings.

Preamble – A ceiling fan

Transition Phrase – comprising

Body – base connected to a solid rod, which in turn is connected to a rotor with three wings.

7 April 2023 © 2012 Brain League

Cont...

PATENT

A ceiling fan comprising of a base connected to a solid rod, which inturn is connected to a rotor with three wings. Elements▪ Base▪ Solid rod▪ Rotor▪ 3 Wings

PRODUCT

A ceiling fan having a base to be attached to the ceiling and which has a hollow rod connected to the base. The hollow rod is connected to a circular rotor having 4 wings.

7 April 2023 © 2012 Brain League

Example “ A gel

composition for treatment of pain comprising; 2-10 percent by weight Benzocaine and atleast one of propylene glycol and glycerine as a co-solvent.”

Preamble – A gel composition for treatment of pain

Transition Phrase – comprising

Body – 2-10 percent by weight Benzocaine and atleast one of propylene glycol and glycerine as a co-solvent.

Elements▪ 2-10 percent by weight Benzocaine▪ Propylene glycol or Glycerine

7 April 2023 © 2012 Brain League

Example 1

PATENT “ A gel composition for

treatment of pain comprising;

2-10 % by weight Benzocaine in atleast in part as the free base; and

atleast one of propylene glycol and glycerine as a solvent. “

Infringing?

PRODUCT “ A gel for treating

neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10 % by weight of Benzocaine and glycerine as solvent.“

7 April 2023 © 2012 Brain League

Example 2

PATENT “ What I claim is a gel

composition for treatment of pain comprising;

2-10 % by weight Benzocaine; andpropyl paraben.“

Infringing?

PRODUCT

“ A gel for treating neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10% by weight of Benzocaine and methyl paraben.“

7 April 2023 © 2012 Brain League

Lalabhai v. Chimanlal

Process of treating dry fruits Elements

Sulphuric Acid - Washing Soda muriatic acid - Acetic acid Sulphur dioxide fumes under pressure -

Sulphur dioxide fumes without pressure

7 April 2023 © 2012 Brain League

NTP v. RIM

Black Berry Technology

‘communication’ – does the word also include wireless communication and not only wired communication.

Settled – 612.5 million dollars paid by RIM

7 April 2023 © 2012 Brain League

Polaroid Corp. v. Eastman Kodak Co. Kodak - Exclusive supplier of negatives

for Polaroid cameras (from 1963 until 1969)

Polaroid chose to manufacture its own instant film.

The Kodak enters instant camerawith models known as the Kodamatic and the Colorburst.

Kodak loses patent battle with Polaroid Corporation

Damages awarded to Polaroid $909,457,567.00 (nearly one billion dollor)

7 April 2023 © 2012 Brain League

Freedom To Operate (FTO) analysis Multistage process

Identify key elements of the product Identify the country(-ies) of interest Patent screening Patent analysis Report

Decision FTO Exists – Product may be launched FTO Doesn't exist – Product launch subject to

risks

7 April 2023 © 2012 Brain League

Options Work around Collaborate License Infringe Defend Challenge

7 April 2023 © 2012 Brain League

Practical advice

Obtain patent rights Mandatory OR optional?

Avoid third party patent infringement Mandatory OR optional?

7 April 2023 © 2012 Brain League

IP Resources SiNApSE blog

www.sinapseblog.com Online IP courses

www.onlineipcourses.com Radio SiNApSE

www.radiosinapse.com Newsletter

www.ipconvergence.in

Thank You