Patent Risk Analysis

ByKalyan C. KankanalaChief Knowledge OfficerBrain League IP Serviceskalyan@brainleague.com

Copyright, Brain League IP Services, Non-commercial use is permitted

Patent Rights

• Territory• Product Patent - Make, Use,

Sell, Offer for Sale and Import.• Process patent - Use

Infringement

• Types – Direct

•Literal•Equivalent

– Indirect

Direct Infringement

• Claim Construction• Comparison• Claim by claim - element by

element

Claim Construction

• Claim

• Preamble • Transition• Body

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

Claim Elements

• Base• Solid rod• Rotor• 3 wings

Is this product infringing?

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

• The product is a fan with a light attached to it. The fan has a flat solid plate to which a hollow rod is attached. The rotor of the fan has four wings.

Doctrine of Equivalence

• Equivalents of a claim– Function– Way– Result

• Prosecution History Estoppel

Indirect Infringement

• Contributory Infringement• Inducement to infringe

Lalabhai v. Chimanlal

• Process of treating dry fruits• Comparison • Sulphuric Acid - Washing Soda• muriatic acid - Acetic acid• Sulphur dioxide fumes under

pressure - Sulphur dioxide fumes without pressure

Raj Prakash V. Mangat Ram

• Process - Printing picture films for use in film strip viewer

• Respondents - Film Viewers - Pictures and films of different dimensions

• Held liable - Substantially Equivalent

NTP v. RIM

• Black Berry Technology• RIM held liable for

infringement• Damages – 612 million dollars

Example

• Claim:

• A phone comprising

• a housing in an interior wall, • a push-button dialing pad mounted within a front wall of

the housing, • a telephone handset means being a handle comprising

a earpiece at one end and a mouthpiece at an opposite end and

• a handset cord electrically connected between the push-button dialing pad and the telephone handset.

Example

• Product:

• A telephone used as a pay phone, which is incorporated in a casing. The casing has a dial pad for enabling dialing. A person may use the phone through a head set having ear phones and a microphone. The headset being wirelessly connected to the telephone in the casing.

Defenses

• Patent Invalid– Subject Matter– Utility– Novelty– Non-obviousness– Specification

Defenses

• Government Use– By or For

• Research Exemptions– Experiment– FDA Approval

• Parallel Imports

Equitable Defenses

• Patent Misuse• Inequitable Conduct• Laches

Example

• Vini gets a patent on a drug for AIDS and a method for making the kit in USA, India and Bangladesh. Dizer comes up with an alternative cost-effective, process for making the drug and acquires a patent on the same in USA, India and Bangladesh. Dizer manufactures and sells the drug in India and Bangladesh.

• Is Dizer liable for patent infringement?

Example

• Anil files for a patent over a twin spark plug used on motor cycles before the Indian patent office. In the application, Anil forgets to disclose his foreign application in USA and the name of his co-inventor, Raju. Zenta makes bikes having the spark plug. Anil sues Zenta for patent infringement.

• Is Zenta liable?

Example

• The defence department manufactures night vision devices for use by the army without permission of the patent holder. The patent holder sues the defence for patent infringement.

• Is the defence department liable?

Example

• X, a professor at IISc, uses a patented robot in the laboratory for understanding its functioning under controlled conditions. X develops an improved robot based on his findings and files for a patent. The patent holder sues X.

• Is X liable?

Example

• X purchases patented pens from an authorized dealer in USA and imports such pens to India.

• Would X’s sale of pens in India amount to patent infringement?

Example

• Mr. Guav Kumar holds a patent over a cell phone in USA and India. Guav authorizes Sprint in USA to sell his patented cell phone. Rollonce purchases the cell phones from Sprint and sells them in India.

• Is Rollonce liable?

Kalyan C. Kankanala Chief Knowledge Officer Brain League IP Services Email: kalyan@brainleague.com Ph: 91-80-41489502/4 Url: www.brainleague.com Blog: www.indianipinfo.blogspot.com

• Thank you