Patent Risk Analysis

Dr. Kalyan C. Kankanala kalyan@brainleague.com www.brainleague.com Blog: www.sinapseblog.com Course materials: www.onlineipcourses.com
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Patent Rights
‡ Territory ‡ Product Patent - Make, Use, Sell, Offer for Sale and Import. ‡ Process patent - Use

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Infringement
‡ Types ² Direct ‡Literal ‡Equivalent ² Indirect

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

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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.
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Claim Elements
‡ ‡ ‡ ‡ Base Solid rod Rotor 3 wings

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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.

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Doctrine of Equivalence
‡ Equivalents of a claim ² Function ² Way ² Result ‡ Prosecution History Estoppel

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Indirect Infringement
‡ Contributory Infringement ‡ Inducement to infringe

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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
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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
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NTP v. RIM
‡ Black Berry Technology ‡ RIM held liable for infringement ‡ Damages ² 612 million dollars

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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.

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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.
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Defenses
‡ Patent Invalid ² Subject Matter ² Utility ² Novelty ² Non-obviousness ² Specification
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Defenses
‡ Government Use ² By or For ‡ Research Exemptions ² Experiment ² FDA Approval ‡ Parallel Imports
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Equitable Defenses
‡ Patent Misuse ‡ Inequitable Conduct ‡ Laches

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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?
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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 coinventor, Raju. Zenta makes bikes having the spark plug. Anil sues Zenta for patent infringement. ‡ Is Zenta liable?
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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?
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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?
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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?

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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?
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FTO Analysis
‡ Launch a product ‡ Patent search ‡ Analysis of infringement ‡ Options

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Thank you For more information: www.sinapseblog.com www.ipracademy.com www.onlineipcourses.com
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