IP Risk Management

Dr. Kalyan C. Kankanala kalyan@brainleague.com url: www.brainleague.com Blog: www.indianipinfo.blogspot.com Radio: www.sinapse.intellectureindia.com/radio

Risk Sources
‡ Internal ‡ Generation ‡ Excavation ‡ Protection ‡ Management ‡ External ‡ Infringement ‡ Transactions

‡Patent Risks

‡Patent Risks

Patent Rights
‡ Territory ‡ Product Patent - Make, Use, Sell, Offer for Sale and Import. ‡ Process patent - Use

Infringement
‡ Types ² Direct ‡Literal ‡Equivalent ² Indirect

Direct Infringement
‡ Claim Construction ‡ Comparison ‡ Claim by claim - element by element

Claim Construction
‡ Claim ‡ Preamble ‡ Transition ‡ Body ‡ 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.

Claim Construction
‡ Preamble - I claim a 'ceiling Fan' ‡ Transition - comprising of ‡ Body - base 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?
‡ 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. ‡ I claim a 'ceiling Fan' comprising of a base connected to a solid rod, which inturn is connected to a rotor with three wings.

Doctrine of Equivalence
‡ ‡ ‡ ‡ ‡ Equivalents of a claim In substance equivalent Function-Way-Result Test Prosecution History Estoppel Obviousness Test ² Material Effect ² Part of prior art

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 ² 612 million dollars

Indirect Infringement
‡ Contributory Infringement ‡ Inducement to infringe

Defenses
‡ Government use ‡ Research Exemptions ‡ Experiments or education ‡ FDA approval ‡ Other Defenses

Steps
‡ FTO Search and Analysis ‡ Infringement analysis ‡ Technology Landscape

Example
‡ Flav sells fruits with flavours induced into them. Sells fruits like grapes, apples and so on with orange, mango and any other flavour induced into them. Flav's process is as follows: ‡ Frozen fruits are sorted, sliced and de-frosted; ‡ Water and/or acid treatment is given to the fruits to remove their natural flavour by removing sugars, acids and other water soluble ingredients; ‡ Fruits are then immersed in sugar syrup and other flavoured liquids for about three hours; and ‡ Air is blown on the fruits with force to dry them. ‡ Flav wishes to avoid patent risks in India. What should it do?

Example
‡ ‡ ‡ Claim A process for preparing a flavored dried fruit product said process comprising: (a) treating a dried fruit with an acidulant being selected from the group consisting of tartaric acid, malic acid, citric acid, ascorbic acid, phosphoric acid, and fumaric acid, in an amount and for a period of time which is sufficient to substantially remove the natural flavor of the dried fruit; (b) dehydrating the treated dried fruit to obtain a desired moisture content; and (c) treating the dried fruit during step (a) or after step (b) with a flavoring agent having a flavor which does not substantially correspond to the natural flavor of the dried fruit.

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Infringing?

‡ Trademark Risks

Trademark Rights
‡ Right to use ‡ Right to obtain relief

Trademark Infringement
‡ Registered trademark ‡ Identical or Deceptively Similar marks ‡ Identical or similar goods or services ‡ Likelihood of confusion ‡ Famous mark

Passing Off
‡ ‡ ‡ ‡ ‡ Misrepresentation Course of trade Consumers Injury to business or good will Actual damage

Ganga Foundry Vs. Ganga Engineering Works
‡ Registered trademark ´GANGAµ manufacture and selling of electric motors and pump sets including submersible pump sets. ‡ Defendant selling the same products under the same trademark. ‡ Held liable for infringement.

Horlicks Limited Vs. Kartick Sadhakan
‡ Horlicks Trademark - energy boosting products ‡ Defendant - Toffee ‡ Held liable for passing off

Adobe Vs. Rohit
‡ Registered domain name ² www.adobe.org ‡ Held ² Domain Name registration not authorized ‡ Restrained from use ‡ Punitive damages ² Rs. 5 lakhs

‡ Copyright Risks

Copyrights
‡ ‡ ‡ ‡ ‡ ‡ Reproduce Adapt Distribute Derivative works Public Display Public Performance

Copyright Infringement
‡ Any person ‡ Without license ² Owner ² Registrar ‡ In contravention of conditions of license ‡ Violates exclusive rights

Copyright Infringement
‡ Existence of copyright ‡ Ownership ‡ Copying ² Access ² Substantial similarity

Indirect Infringement
‡ Contributory infringement ‡ Vicarious infringement

Defenses
‡ ‡ ‡ ‡ Ideas Facts Work in Public Domain Fair dealing or Fair Use

Mackie v. Rieser
‡ Image of an artist's sculpture included in brochure ‡ Held liable for copyright infringement ‡ Damages - 1, 000 dollars

Silver Ring Splint v. Digisplint
‡ Jewelry manufacturer - Website, Catalog and Handbill ‡ Alleged that defendant's website and catalog violated copyright ‡ Held liable

‡ Trade Secret Risks

Misappropriation
‡ Conduct which results in obtaining trade secret information by improper means constitutes misappropriation. ‡ ¶Improper means· ‡ Criminal Conduct ‡ Breach of Contract ‡ Tortuous liability

Defenses
‡ Reverse Engineeing ‡ Independent Creation

Risk Management
‡ Risk Assessment and Categorization ‡ Actions ‡ Search and FTO Analysis ‡ Technology Landscaping ‡ Options ‡ ‡ ‡ ‡ ‡ Work around Collaborate License Infringe Defend

‡ Thank you

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