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
– Direct
•Literal
•Equivalent
– 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 – Material
Effect – 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 – 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.

• Infringing?
• 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
 References

• Dr. Kalyan Kankanala, Arun Narasani and Vinita

Radhakrishnan, Indian Patent Law and Practice,
Oxford University Press, 2010 (ISBN No. - 97801
98067740.)
• AMAZIN' RAISINS INTERNATIONAL, INC., Vs.
OCEAN SPRAY CRANBERRIES, INC., 306 Fed.Appx.
553, 2008 WL 5474244 (C.A.Fed. (Mass.)).
• Raj Prakash Vs. Mangat Ram Chowdhry,
MANU/DE/0152/1977.
• Lalubhai Vs. Chimanlal, MANU/MH/0038/1935.
• NTP Vs. Research in Motion
• NTP, INC., v. RESEARCH IN MOTION, LTD.,, 418
F.3d 1282 (2005).
• www.sinapseblog.com
• Thank you