Patent: A presentation on Patent Risk Analysis by Dr. Kalyan at the United Nations Industrial...

Patent Risk AnalysisDr. Kalyan C. [email protected]

www.bananaip.com Blog: www.sinapseblog.com

Course materials: www.onlineipcourses.com

Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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.Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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? Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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?Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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?Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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?Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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?Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

FTO Analysis

• Launch a product • Patent search• Analysis of infringement

• Options


Thank you

For more information:

www.sinapseblog.com www.ipracademy.com

www.onlineipcourses.com Copyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP,

2011

Patent: A presentation on Patent Risk Analysis by Dr. Kalyan at the United Nations Industrial...

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Transcript of Patent: A presentation on Patent Risk Analysis by Dr. Kalyan at the United Nations Industrial...