Patent Practice A Practical Approach
@ M S Ramaiah Institute of Technology, Bangalore
BananaIP Counsels
1 May 2023
Patent in Business Motorola – Google
Deal: 12.5 Billion Patent Portfolio Value:
approx. $4billion (33%)
RIM Company’s Valuation:
$2.5 Billion Patent Portfolio Value: $1
Billion (40%)▪ If it continues to
manufacture/ sell its phones
Kodak Company’s valuation:
$576million Patent Portfolio: $3 Billion
Nortel- Apple, RIM, Sony, Microsoft (for Nortel’s Patent Portfolio) Portfolio Valuation:
Approximately $1 Billion Deal: $4.5 Billion (450%)
Note : Figures based on data generally available on the internet.
© 2012 BananaIP Counsels
1 May 2023
Patent in Business
IBM, for 19 consecutive years is said to have the highest Patent Portfolio in the United States, followed by Samsung, Cannon , Panasonic, Microsoft, etc
IBM is said to approximately garner a whopping $1billion from its Patent Portfolio every year by licensing the same.
Google deal© 2012 BananaIP Counsels
1 May 2023
Patent add value – Importance of patents Strategic business advantage
Preventing competition from doing same stuff
Increase valuation of an organization
Bring licensing revenues
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1 May 2023
Patent related considerations
1. Obtaining patent rights
2. Avoiding third party patent infringement
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1. Obtaining patent rights
1 May 2023
Obtaining patent rights
Filing of application for patent What inventions to file?
Publication – rights start Grant – rights are enforceable
Pre-filing recommendations Check for patentability
© 2012 BananaIP Counsels
1 May 2023
Patentability criteria
Subject matter
Utility
Novelty
Non-obviousness / Inventive step
Specification© 2012 BananaIP Counsels
1 May 2023
Subject matter Inclusion list
Product Process
Exclusion list Sec 3 and 4
Not patentable examples Perpetual motion machine A new theory Sweet lime juice Wrist watch with compass
© 2012 BananaIP Counsels
1 May 2023
Utility / Industrial applicability Industrial application
Capable of being made or produced in an industry
Present use
Relatively one of the easiest requirement to fulfill.
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1 May 2023
Novelty
New in light of what is already existing
Rule - compare one prior art at a time
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1 May 2023
Inventive step / Non obviousness Inventive step
Technically advanced or has economic significance; and
Not obvious to a person skilled in the art
Person skilled in the art
© 2012 BananaIP Counsels
1 May 2023
Cont... Problem-solution approach
Identify the problem Proposed solution obvious in light of existing ones Secondary indications▪ Commercial success▪ Copying▪ Praise by experts▪ Unexpected results▪ Long felt need
Rule - combine all relevant prior art references
© 2012 BananaIP Counsels
1 May 2023
Specification
Meet all the guidelines specified in the act
Written description Describe in a detail manner
Enablement Capable of being worked independently
by a person having skill in the art© 2012 BananaIP Counsels
1 May 2023
Patentability criteria met Patent procedure
followed Publication Examination Grant of patent
Follows All rule for grant
Fig: Kalyan’s Patent filter model
© 2012 BananaIP Counsels
1 May 2023
Practical Perspective – Patent search, drafting and filing All requirements can broadly be classified under 3 stages
Stage 1 – Pre-search stage Subject matter Utility
Stage 2 - Patentability assessment search and analysis Novelty Non-obviousness
Stage 3 - Application drafting and filing Specification▪ Written description▪ Enablement
© 2012 BananaIP Counsels
1 May 2023
Example
Invention Chair with wheels
Prior art Chair Wheels for toys
Patentable?
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1 May 2023
Example
Invention Voice mailbox
Prior art Telephony Voice recorders
Patentable?© 2012 BananaIP Counsels
1 May 2023
Example Claim 1: A water bottle cap, said cap comprising:
a base defining an opening, said base having a locking mechanism configured to engage said base with a bottle;
a water outlet pipe adapted to be received inside the opening, said pipe attached to said base; and
a closure member hingedly engaged to said base, said closure member adapted to move between an open position, where the closure member moves away from said pipe, and a closed position, where the closure member moves towards said pipe and abuts said base.
© 2012 BananaIP Counsels
1 May 2023
Cont… Prior Art 2 discloses a water
bottle cap having a base. The base of the water bottle cap defines an opening. Further, a closure member is hingedly attached to the base. The closure member moves between an open position, where the closure member moves away from the opening of the base, and a closed position, where the closure member moves towards opening of the base. The projection of the closure member, in the closed position, extends inside the opening and thus seals the opening.
© 2012 BananaIP Counsels
Prior Art 1 discloses a water bottle cap having a base with an opening. Further, a straw adapted to be received inside the opening is disclosed. The straw extends inside the bottle. The straw has a closure member just enough to close an opening defined in the straw. Further, the straw has a sealing mechanism which seals the opening defined by the base.
1 May 2023
Novelty and Non-obviousness?Invention Prior art 1 Prior art 2Base √ √Water outlet √ XClosure member X √
© 2012 BananaIP Counsels
1 May 2023
Patent Rights
Rights of patentee Make Use Sell Offer for sale Import
Negative rights
Infringement© 2012 BananaIP Counsels
2. Avoiding third party patent infringement
1 May 2023
Infringement concepts
Infringement when? Exclusive rights
violated
Scope of rights? Defined by claims▪ Claims define the metes
and bounds of the invention
Infringement factors Territorial Term Claims
© 2012 BananaIP Counsels
1 May 2023
Infringement types
Direct infringement Literal infringement Doctrine of equivalence
Indirect infringement Contributory infringement Induced infringement
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Infringement check
Claim construction
Comparison
Claim by claim - element by element analysis
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Parts of a claim Preamble
Transition phrase
Body
Claim 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.
© 2012 BananaIP Counsels
1 May 2023
Claim construction A ceiling fan
comprising of a base connected to a solid rod, which in turn is connected to a rotor with three wings.
Preamble – A ceiling fan
Transition Phrase – comprising
Body – base connected to a solid rod, which in turn is connected to a rotor with three wings.
© 2012 BananaIP Counsels
1 May 2023
Cont...
PATENT
A ceiling fan comprising of a base connected to a solid rod, which inturn is connected to a rotor with three wings. Elements▪ Base▪ Solid rod▪ Rotor▪ 3 Wings
PRODUCT
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.
© 2012 BananaIP Counsels
1 May 2023
Example “ A gel
composition for treatment of pain comprising; 2-10 percent by weight Benzocaine and atleast one of propylene glycol and glycerine as a co-solvent.”
Preamble – A gel composition for treatment of pain
Transition Phrase – comprising
Body – 2-10 percent by weight Benzocaine and atleast one of propylene glycol and glycerine as a co-solvent.
Elements▪ 2-10 percent by weight Benzocaine▪ Propylene glycol or Glycerine
© 2012 BananaIP Counsels
1 May 2023
Example 1
PATENT “ A gel composition for
treatment of pain comprising;
2-10 % by weight Benzocaine in atleast in part as the free base; and
atleast one of propylene glycol and glycerine as a solvent. “
Infringing?
PRODUCT “ A gel for treating
neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10 % by weight of Benzocaine and glycerine as solvent.“
© 2012 BananaIP Counsels
1 May 2023
Example 2
PATENT “ What I claim is a gel
composition for treatment of pain comprising;
2-10 % by weight Benzocaine; andpropyl paraben.“
Infringing?
PRODUCT
“ A gel for treating neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10% by weight of Benzocaine and methyl paraben.“
© 2012 BananaIP Counsels
1 May 2023
Lalabhai v. Chimanlal
Process of treating dry fruits Elements
Sulphuric Acid - Washing Soda muriatic acid - Acetic acid Sulphur dioxide fumes under pressure -
Sulphur dioxide fumes without pressure
© 2012 BananaIP Counsels
1 May 2023
NTP v. RIM
Black Berry Technology
‘communication’ – does the word also include wireless communication and not only wired communication.
Settled – 612.5 million dollars paid by RIM
© 2012 BananaIP Counsels
1 May 2023
Polaroid Corp. v. Eastman Kodak Co. Kodak - Exclusive supplier of negatives
for Polaroid cameras (from 1963 until 1969)
Polaroid chose to manufacture its own instant film.
The Kodak enters instant camerawith models known as the Kodamatic and the Colorburst.
Kodak loses patent battle with Polaroid Corporation
Damages awarded to Polaroid $909,457,567.00 (nearly one billion dollor)
© 2012 BananaIP Counsels
1 May 2023
Freedom To Operate (FTO) analysis Multistage process
Identify key elements of the product Identify the country(-ies) of interest Patent screening Patent analysis Report
Decision FTO Exists – Product may be launched FTO Doesn't exist – Product launch subject to
risks© 2012 BananaIP Counsels
1 May 2023
Options Work around Collaborate License Infringe Defend Challenge
© 2012 BananaIP Counsels
1 May 2023
Practical advice
Obtain patent rights Mandatory OR optional?
Avoid third party patent infringement Mandatory OR optional?
© 2012 BananaIP Counsels
1 May 2023
IP Resources SiNApSE blog
www.sinapseblog.com Online IP courses
www.onlineipcourses.com Radio SiNApSE
www.radiosinapse.com Newsletter
www.ipconvergence.in
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