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AN

ASSIGNMENT
ON

PATENT
INFRINGEMENT
[INTEACTUAL PROPERTY
RIGHTS II]
Name-jarrar ahmad
B.A LL.B (H) 9th Semester
SECTION A
ROLL NO -13

ACKNOWLEDGMENT

I have a great pleasure in expressing my


deep sense of ineptness and gratitude to
my Dr S.Z.AMANI , for his valuable
guidance, meticulous supervision and
perpetual inspiration which provided me
with the strength and zeal to complete the
project work.
I also extend my gratefulness to all the
people who help me in my project and to
the learned authors whose works I have
consulted and referred on many occasions.

Delhi

JARRAR AHMAD

Contents: Introduction
Elements of Patent Infringement
Indirect Infringement
Legislation
Clearance Search, Clearance Validity and Enforceability Opinions
Patent Infringement Insurance
Piracy
Threat to bring Infringement Action
Notable Infringement Cases
Bibliography

INTRODUCTION:

Patent infringement is the commission of a prohibited act with respect to a


patented invention without permission from the patent holder. Permission may
typically be granted in the form of a license. The definition of patent
infringement may vary by jurisdiction, but it typically includes using or selling
the patented invention. In many countries, a use is required to be commercial (or
to have a commercial purpose) to constitute patent infringement.
The scope of the patented invention or the extent of protection is defined in
the claims of the granted patent. In other words, the terms of the claims inform
the public of what is not allowed without the permission of the patent holder.
Patents are territorial, and infringement is only possible in a country where a
patent is in force. For example, if a patent is filed in the United States, then
anyone in the United States is prohibited from making, using, selling or
importing the patented item, while people in other countries may be free to
make the patented item in their country. The scope of protection may vary from
country to country, because the patent is examined by the patent office in each

country or region and may have some difference of patentability, so that a


granted patent is difficult to enforce worldwide.

Elements of patent infringement


Typically, a party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or offers for sale patented technology without
permission/license from the patentee, during the term of the patent and within
the country that issued the patent, is considered to infringe the patent.
The test varies from country to country, but in general it requires that the
infringing party's product (or method, service, and so on) falls within one or
more of the claims of the patent. The process employed involves "reading" a
claim onto the technology of interest. If all of the claim's elements are found in
the technology, the claim is said to "read on" the technology; if a single element
from the claim is missing from the technology, the claim does not literally read
on the technology and the technology does not infringe the patent with respect
to that claim.
In response to allegations of infringement, an accused infringing party will
generally assert one or more of the following:

it was not practicing the patented invention;

it was not performing any infringing act in the territory covered by the
patent;

the patent has expired;

the patent (or the particular claim(s) alleged to be infringed) is invalid,


because the invention in question does not meet patentability or includes a
formal defect, rendering the patent invalid or unenforceable;

it has obtained a license under the patent;

the patent holder is infringing patent rights belonging to the accused


infringing party, and the party may resolve the dispute in settlement or crosslicensing.

Indirect infringement:
In certain jurisdictions, there is a particular case of patent infringement called
"indirect infringement." Indirect infringement can occur, for instance, when a
device is claimed in patent and a third party supplies a product which can only
be reasonably used to make the claimed device.

Legislation
Canada:
In Canada, patents are governed by the Patent Act (R.S.C., 1985, c. P-4).
Section 42 of the Patent Act establishes the rights of a patent holder:
42. Every patent granted under this Act shall contain the title or name of the
invention, with a reference to the specification, and shall, subject to this Act,
grant to the patentee and the patentees legal representatives for the term of the
patent, from the granting of the patent, the exclusive right, privilege and
liberty of making, constructing, using the invention and selling it to others
to be used, subject to adjudication in respect thereof before any court of
competent jurisdiction.
By granting the patent holder the exclusive right, privilege and liberty of
making, constructing, using, and selling the invention, the patent act establishes
that any other person making, constructing, using, or selling the patented
invention is infringing that patent. Whether there has been an infringement of a
patent is usually a question of fact.

Europe:

In Europe, patent infringement of both national patents and European


patents are essentially dealt upon by national courts. Although European patents
are granted by the European Patent Office, these European patents lead are
enforced at a national level, i.e. on a per-country basis. The European Union is
discussing the project of an EU patent (formerly called Community patent)
which would be centrally enforceable. However, this project has not concretized
into law so far.
Japan:
Infringement under the patent law in Japan is defined by Article 101 of Patent
Act (Act No. 121 of 1959), which shows the following acts shall be deemed to
constitute infringement of a patent right or an exclusive license:

(i) where a patent has been granted for an invention of a product, acts of
producing, assigning, etc., importing or offering for assignment, etc. any
product to be used exclusively for the producing of the said product as a
business;

(ii) where a patent has been granted for an invention of a product, acts of
producing, assigning, etc., importing or offering for assignment, etc. any
product (excluding those widely distributed within Japan) to be used for the
producing of the said product and indispensable for the resolution of the
problem by the said invention as a business, knowing that the said invention

is a patented invention and the said product is used for the working of the
invention;

(iii) where a patent has been granted for an invention of a process, acts of
producing, assigning, etc., importing or offering for assignment, etc. any
product to be used exclusively for the use of the said process as a business;
and

(iv) where a patent has been granted for an invention of a process, acts of
producing, assigning, etc., importing or offering for assignment, etc. any
product (excluding those widely distributed within Japan) to be used for the
use of the said process and indispensable for the resolution of the problem
by the said invention, knowing that the said invention is a patented invention
and the said product is used for the working of the invention as a business.

United Kingdom:
Infringement under United Kingdom patent law is defined by Section 60 of
the UK Patents Act 1977 (as amended), which sets out the following types of
infringement:

Where the invention is a product, by the making, disposing of, offering to


dispose of, using, importing or keeping a patented product.

Where the invention is a process, by the use, or offer for use where it is
known that the use of the process would be an infringement. Also, by the
disposal of, offer to dispose of, use or import of a product obtained directly
by means of that process, or the keeping of any such product whether for
disposal or otherwise.

By the supply, or offer to supply, in the United Kingdom, a person not


entitled to work the invention, with any of the means, relating to an essential
element of the invention, for putting the invention into effect, when it is
known (or it is reasonable to expect such knowledge) that those means are
suitable for putting, and are intended to put, the invention into effect in the
United Kingdom.

United States:
In United States law, an infringement may occur where the defendant has made,
used,

sold,

offered

to

sell,

or

imported

an

infringing invention or

its equivalent. One also commits indirect infringement if he actively and


knowingly induces another to infringe, and is liable for that infringement. Types
of "indirect infringement" include "contributory infringement" and "induced
infringement."
No infringement action may be started until the patent is issued. However, pregrant protection is available under 35 U.S.C. 154(d), which allows a patent
owner to obtain reasonable royalty damages for certain infringing activities that

occurred before patent's date of issuance. This right to obtain provisional


damages requires a patent holder to show that (1) the infringing activities
occurred after the publication of the patent application, (2) the patented claims
are substantially identical to the claims in the published application, and (3) the
infringer had "actual notice" of the published patent application.
In the US there are safe harbor provisions to use a patented invention for the
purposes of gathering data for a regulatory submission.

Clearance search, and clearance, validity and enforceability opinions


A clearance search, also called freedom-to-operate search or infringement
search, is a search done on issued patents or on pending patent applications to
determine if a product or process infringes any of the claims of the issued
patents or pending patent applications. A clearance search may also include
expired art that acts as a 'safe harbor' permitting the product or process to be
used based on patents in the public domain. These searches are often performed
by one or more professional patent searchers who are under the direction of one
or more patent attorneys.
A clearance search can be followed by a clearance opinion, i.e. a legal opinion
provided by one or more patent attorneys as to whether a given product or
process infringes the claims of one or more issued patents or pending patent
applications. Clearance opinions may be done in combination with a "validity
and enforceability" opinion. A validity and enforceability opinion is a legal
opinion as to whether a given patent is valid and/or enforceable. In other words,
a validity opinion is a legal opinion or letter in which a patent attorney or patent
agent analyzes an issued patent and provides an opinion on how a court might
rule on its validity or enforceability. Validity opinions are often sought before
litigation related to a patent. The average cost of a validity opinion (according to
one 2007 survey) is over $15,000, with an infringement analysis adding an
additional $13,000.

The cost of these opinions for U.S. patents can run from tens to hundreds of
thousands of dollars (or more) depending upon the particular patent, the number
of defenses and prior art references, the length of the prosecution file history,
and the complexity of the technology in question.
An exculpatory opinion (setting forth reasons the patent is not infringed, or
providing other defenses such as prior use, intervening rights, or prior
invention) is also possible.

Patent infringement insurance


Patent infringement insurance is an insurance policy provided by one or more
insurance companies to protect either an inventor or a third party from the risks
of inadvertently infringing a patent.
For inventors, patent infringement insurance covers legal costs in case they have
to sue an infringer to enforce their patent.
For third parties, patent infringement insurance covers their legal costs in case
they are sued for patent infringement by an inventor.
Patent infringement insurance is generally considered too expensive to be worth
the cost. The premiums must be high, however, due, at least in part, to the high
legal costs of patent infringement cases. A typical patent infringement case in
the US costs 1 - 3 million dollars in legal fees for each side. This is despite the
fact that 99% of all patent infringement cases are settled. Legal fees in
pharmaceutical cases can run 30 million dollars or more, although this should
be contrasted with the fact that billions of dollars may be at stake.
In June 2006, a Study for the European Commission on the feasibility of
possible insurance schemes against patent litigation risks was published. The
report concluded that the continuation of the status quo with very little,
disproportionately expensive, bespoke patent litigation insurance (PLI) would
not meet any objectives for a feasible insurance scheme. Instead, only a
mandatory scheme was considered to be viable in order to provide the economic

and technical benefits to the EU and individual patentees which would arise
from a widespread PLI scheme.

Piracy
Since the 1840s, the expression "patent pirate" has been used as
a pejorative term to describe those that infringe a patent and refuse to
acknowledge the priority of the inventor. Samuel F. B. Morse, inventor of
the telegraph, for example, complained in a letter to friend in 1848
I have been so constantly under the necessity of watching the movements
of the most unprincipled set of pirates I have ever known, that all my time
has been occupied in defense, in putting evidence into something like
legal shape that I am the inventor of the Electro-Magnetic Telegraph!!
Would you have believed it ten years ago that a question could be raised
on that subject?
Those who accuse others of being patent pirates say that they take advantage
of the high cost of enforcing a patent to willfully infringe valid patents with
impunity, knowing that the average small inventor does not have the
financial resources required to enforce their patent rights. In the US, for
example, an inventor must budget $1 million or more in order to initiate
patent litigation. They say that patent pirates also take advantage of
countries where patent rights are difficult to enforce and willfully infringe in
those countries.
Ironically, the term "pirate" has also been used to describe patent owners that
vigorously enforce their patents. Thus whether one deliberately infringes a

patent or whether one vigorously enforces a patent, they may be referred to


as a pirate by those that feel they are overstepping their bounds.

Threat to bring a patent infringement action


"A threat to bring a patent infringement action is highly likely to influence
the commercial conduct of the person threatened, which is why the law of
some countries, including the UK, provides that the making of a groundless
threat to sue is, within certain carefully prescribed limits, an actionable
wrong in itself."[15] This however is not the case in the United States.
Anton Piller order (common procedure in certain countries to obtain
proofs of infringement)
Cease and desist order
Copyright infringement
Enforcement of European patents
Glossary of patent law terms
Industrial espionage
Inequitable conduct
Patent court
Patent prosecution

Patent retaliation (clause)


Patent troll
Smartphone patent licensing and litigation
Saisie-contrefaon
Soft IP
Software hoarding
Stick licensing

Notable infringement cases:


Monsanto Canada Inc. v. Schmeiser - A Canadian farmer sued for
growing canola seed patented by Monsanto.
Apple Inc. v. Samsung Electronics Co., Ltd.
Microsoft v. Motorola

Bibliography

Books and Journals

Law Relating to Intellectual Property Rights, VK Ahuja Ist Edition


Intellectual Property and Taxation , Sudhir Raja Ravindran
Intellectual Property and Sustainable Development , Phillepe Cullet
Internet