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

Patent Risk Analysis
Dr. Kalyan C. Kankanala
kalyan@bananaip.com
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 withoutCopyright- M/S. Brain League IP Services Pvt. Ltd. Now BananaIP, 2011

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

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

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?

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?

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 Development Organisation -BananaIP

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