Patent Infringement

Patent Infringement

By Dr. Kal yan C . Kankanala Br ain League IP Ser vices

© 2009 Brain League IP Services Pvt. Ltd

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 cricket bat comprising an elongated circular wooden handle connected to an elongated wooden blade along the longitudinal axes of said blade and handle to form a continuous elongated implement.

Claim Elements • Elongated circular wooden handle • elongated wooden blade • handle to blade connection - longitudinal axis of blade

Is this product infringing? • A cricket bat having a octogonal shaped handle to provide grip to the batsman. The handle has a conical end, which is hollow and which sits into a long flat piece of wood. • What I claim is a cricket bat comprising an elongated circular wooden handle connected to an elongated wooden blade along the longitudinal axes of said blade and handle to form a continuous elongated implement.

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 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 – 612 million dollars

L.B. Plastics V. Amerimax • Claim:

• 1) A composite gutter guard ... comprising: • (a) an elongate polymer guard panel ... • (b) a polymer-coated mesh layer overlying said guard panel ... and (c) a continuous heat weld defining an uninterrupted longitudinal weld line connecting said mesh layer to said guard panel ...

Product • The product has a frame and a mesh connected to the frame with the help of a hot glue. The mesh is welded at various points and a hot glue is poured in the gaps. The hot glue solidifies and the mesh attaches to the frame continuously.

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?

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?

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?

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?

•Patent Revocation

Revocation • Any person • Central Government • High Court

Grounds • Patentability Requirements • Not entitled or Wrongfully obtained • Fraud or False representation • Contravention of secrecy directions • Source of origin of biological materials …

Other modes of Revocation • Revocation for Government Use • Revocation of patents relating to atomic energy • Revocation based on public interest • Revocation for non-working • Revocation on surrender

Compulsory Licensing • Non-working • Reasonable requirements of the public • Not available at reasonably affordable prices • National Emergency or Extreme Urgency

• Thank you

© 2009 Brain League IP Services Pvt. Ltd