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Patent Infringement

Patent Infringement

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Published by: SiNApSEblog on Feb 10, 2012
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Author: Som Shekar Ramakrishna
 IntroductionA patent provides exclusivity with respect to the invention that is claimed in the patent document.
The exclusive rights granted to a productpatent include the right to manufacture, use, sell, offer for sale in the country or import into the country in which a patent is granted.
Withrespect to a process patent, the patent holder gets the right to use the process to the exclusion of others.
A process patent also grants the right toprevent others from manufacturing, using, selling, offering for sale or importing the product made using the process. The rights of a patentholder start from the date of publication of the patent application and last until the expiry of the patent term. However, the patent holder canenforce his patent rights only after the patent is granted.Infringement of a patentPatent infringement exists if any person exercises the exclusive rights of the patent holder without permission within the country of patent grantand during the patent term. While assessing patent infringement it is important to ascertain the following:
Whether the person alleged of infringement exercised the rights of the patent holder with respect to the patented invention?;
Whether the rights have been exercised without authorization of the patent holder?;
Whether the actions of the alleged infringer are within the country or territory of patent grant?; and
Whether the patent has not expired or lapsed?
, Email: rsshekar@brainleague.com
Section 48, The Patents Act, 1970Section 48 reads as follows:“Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee -(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering forsale, selling or importing for those purposes that product in India;(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and fromthe act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India”.
Section 48(a), The Patents Act, 1970.
Section 48(b), The Patents Act, 1970.
 A person will be liable for infringement only if answers to all the aforestated questions is affirmative. Among the questions, the most importantand contentious question is the first one. As per the question, a person would be liable for infringement if his product or process is same as thepatented invention. As the claims in a patent define the metes and bounds of the invention claimed, a product or process will be infringing if itfalls within the scope of a claim in the patent. Therefore, understanding the meaning and scope of patent claims (“claim construction”) isimportant for determining infringement.Claim construction is the act of understanding the meaning and scope of a claim.
It is ascertained by identifying the elements or limitations in aclaim and understanding their meaning. The scope of a claim will be influenced by the specification, prosecution history, state of the art,dictionaries and so on. Preamble of the claim may some times act as a limitation of the scope of the claim.Based on its nature, infringement may be classified into two types:A.
Direct Infringement; andB.
Indirect Infringement.Direct Infringement is once again classified into two types:a.
Literal Infringement; andb.
Equivalence Infringement.a.
Literal InfringementLiteral infringement exists if all elements of a claim are literally present in an alleged product or process. Determination of literal infringement isdone by comparing elements of a claim to those of a product or process one on one.b.
Equivalence InfringementEquivalence infringement determination is carried out only if a product or process does not literally infringe on claims of a patent. Infringementby equivalence exists if the elements of a product or process differing from those of claim elements are present by equivalence. Assessment of 
Mariappan Vs.A.R. Safiullah, MANU/TN/0828/2008 at Para 36 citing Raj Prakash v. Mangat Ram Choudhary and Ors., MANU/DE/0152/1977.
equivalence of an element to that of an element in a claim is done through various tests. In India, a product or process is infringing if the productis in substance equivalent to that of the claim. Non-essential elements and insubstantial changes are not sufficient to alienate an otherwiseinfringing product or process from infringement. Substantial equivalence is said to exist if the core of the claimed invention is copied in aproduct or process.US Courts follow the function-way-result test for determining equivalence. As per the test, a product or process is said to be infringing if theelements differing from elements in the claim perform the same function in substantially the same way to produce substantially the same result.Equivalence cannot be applied if the claims are narrowed during prosecution.
This is called as Prosecution History Estoppel.Equivalence determination in UK is done based on purposive construction of claim elements. UK Courts follow a three step analysis, whichincludes assessing material effect of the variant elements, obviousness of such elements and intended scope of the invention as it can beunderstood from the claims. A product or process would not be equivalent if its differing elements from the claim produce a material effectwhen compared to the invention. Equivalence would also not exist if the differing elements and their effect are not obvious to a skilled person inthe light of the patented invention. Furthermore, if the intended scope of claim elements may not be expanded to the differing elements in thealleged product or process, there would be no equivalence.
Unlike US Courts, UK Courts do not use prosecution history as a standard source toidentify the scope of claims in a patent.ExampleConsider Patent A granted to Inventor X on a composite gutter guard. Gutter guard is a device that can be attached to a conventional gutter inorder to allow the free flow of water into the gutter while filtering out dirt, leaves and other debris. A figure of the guttar guard is shownhereunder.
Divided by a common language: a comparison of patent claim interpretation in the English and American courts E.I.P.R. 2004, 26(12), 528-537
Patent infringement in Europe: the British and the German approaches to claim construction or purposive construction versus equivalencyE.I.P.R. 2008, 30(9), 364-370

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