Patent Infringement 1

AN ASSIGNMENT ON

“PATENT INFRINGEMENT ” [INTEACTUAL PROPER PROPERTY  TY  RIGHTS – II] Name-jarrar ahmad BA LLB !H" #$h Seme%$er SECTION – &A' ROLL NO -()

AC*NO+LE,GMENT

I have a great pleasure in expressing my  deep de ep se sens nse e of in inep eptn tnes ess s an and d gr grat atit itud ude e to my Dr S.Z.AMANI , for his valuable guidance, meticulous supervision and  perpetual inspiration which provided me with the strength and zeal to complete the  project work. I also extend my gratefulness to all the  people who help me in my project and to the learned autho horrs wh who ose works I have consulted and referred on many occasions.

Delhi

JARRAR AHMAD

Contents:• 

 Introduction

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 Elements of Patent Infringement 

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 Indirect Infringement   Legislation Clearance Search, Clearance Validity and Enforceability Opinions

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 Patent Infringement Insurance

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 Piracy

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Threat to bring Infringement Action

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 otable Infringement Cases

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 !ibliography

INTRODUCTION:

Patent infringement is the commission of a prohibited act with respect to a  patented invention without permission from the patent holder Permission ma! t!picall! be granted in the form of a license The definition of patent infringement ma! var! b! "urisdiction# but it t!picall! includes using or selling the patented invention In man! countries# a use is re$uired to be commercial  %or  to have a commercial  purpose& to constitute patent infringement The scope of the patented invention or the e'tent of protection is defined in the claims of the granted patent In other words# the terms of the claims inform the public of what is not allowed without the permission of the patent holder Patents are territorial# and infringement is onl! possible in a countr! where a  patent is in force (or e'ample# if a patent is filed in the United )tates# then an!one in the United )tates is prohibited from ma*ing# using# selling or  importing the patented item# while people in other countries ma! be free to ma*e the patented item in their countr! The scope of protection ma! var! from countr! to countr!# because the patent is e'amined b! the  patent office in each

countr! or region and ma! have some difference of  patentabilit!# so that a granted patent is difficult to enforce worldwide

+lements of patent infringement T!picall!# a part! %other than the patentee or licensee of the patentee& that manufactures# imports# uses# sells# or offers for sale patented technolog! without  permission,license from the patentee# during the term of the patent and within the countr! that issued the patent# is considered to infringe the patent The test varies from countr! to countr!# but in general it re$uires that the infringing part!-s product %or method# service# and so on& falls within one or  more of the claims of the patent The process emplo!ed involves .reading. a claim onto the technolog! of interest If all of the claim-s elements are found in the technolog!# the claim is said to .read on. the technolog!/ if a single element from the claim is missing from the technolog!# the claim does not literall! read on the technolog! and the technolog! does not infringe the patent with respect to that claim In response to allegations of infringement# an accused infringing part! will generall! assert one or more of the following:

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it was not practicing the patented invention/

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it was not performing an! infringing act in the territor! covered b! the  patent/

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the patent has e'pired/

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the patent %or the particular claim%s& alleged to be infringed& is invalid#  because the invention in $uestion does not meet  patentabilit! or includes a formal defect# rendering the patent invalid or unenforceable/

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it has obtained a license under the patent/

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the patent holder is infringing patent rights belonging to the accused infringing part!# and the part! ma! resolve the dispute in settlement or cross0 licensing

 Indirect infringement:

In certain "urisdictions# there is a particular case of patent infringement called .indirect infringement. Indirect infringement can occur# for instance# when a device is claimed in patent and a third part! supplies a product which can onl!  be reasonabl! used to ma*e the claimed device

1egislation Canada "

In Canada# patents are governed b! the Patent 2ct %R)C# 3456# c P07& )ection 78 of the Patent 2ct establishes the rights of a patent holder: 78 +ver! patent granted under this 2ct shall contain the title or name of the invention# with a reference to the specification# and shall# sub"ect to this 2ct# grant to the patentee and the patentee9s legal representatives for the term of the  patent# from the granting of the patent# the exclusive right, privilege and liberty of making, constructing, using the invention and selling it to others to be used, sub"ect to ad"udication in respect thereof before an! court of 

competent "urisdiction ! granting the patent holder the e'clusive right# privilege and libert! of  ma*ing# constructing# using# and selling the invention# the patent act establishes that an! other person ma*ing# constructing# using# or selling the patented invention is infringing that patent ;hether there has been an infringement of a  patent is usuall! a $uestion of fact

 Europe:

In +urope# patent infringement of both national patents and +uropean  patents are essentiall! dealt upon b! national courts 2lthough +uropean patents are granted b! the +uropean Patent Office# these +uropean patents lead are enforced at a national level# ie on a per0countr! basis The +uropean Union is discussing the pro"ect of an +U patent %formerl! called Communit! patent& which would be centrall! enforceable
Infringement under the patent law in >apan is defined b! 2rticle 3?3 of Patent 2ct %2ct No 383 of 3464&# which shows the following acts shall be deemed to constitute infringement of a patent right or an e'clusive license:

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%i& where a patent has been granted for an invention of a product# acts of   producing# assigning# etc# importing or offering for assignment# etc an!  product to be used e'clusivel! for the producing of the said product as a  business/

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%ii& where a patent has been granted for an invention of a product# acts of   producing# assigning# etc# importing or offering for assignment# etc an!  product %e'cluding those widel! distributed within >apan& to be used for the  producing of the said product and indispensable for the resolution of the  problem b! the said invention as a business# *nowing that the said invention

is a patented invention and the said product is used for the wor*ing of the invention/

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%iii& where a patent has been granted for an invention of a process# acts of   producing# assigning# etc# importing or offering for assignment# etc an!  product to be used e'clusivel! for the use of the said process as a business/ and

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%iv& where a patent has been granted for an invention of a process# acts of   producing# assigning# etc# importing or offering for assignment# etc an!  product %e'cluding those widel! distributed within >apan& to be used for the use of the said process and indispensable for the resolution of the problem  b! the said invention# *nowing that the said invention is a patented invention and the said product is used for the wor*ing of the invention as a business

United Kingdom:

Infringement under United @ingdom patent law is defined b! )ection A? of  the U@ Patents 2ct 34BB %as amended&# which sets out the following t!pes of  infringement:

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;here the invention is a product# b! the ma*ing# disposing of# offering to dispose of# using# importing or *eeping a patented product

;here the invention is a process# b! the use# or offer for use where it is

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*nown that the use of the process would be an infringement 2lso# b! the disposal of# offer to dispose of# use or import of a product obtained directl!  b! means of that process# or the *eeping of an! such product whether for  disposal or otherwise

! the suppl!# or offer to suppl!# in the United @ingdom# a person not

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entitled to wor* the invention# with an! of the means# relating to an essential element of the invention# for putting the invention into effect# when it is *nown %or it is reasonable to e'pect such *nowledge& that those means are suitable for putting# and are intended to put# the invention into effect in the United @ingdom United States:

In United )tates law# an infringement ma! occur where the defendant has made# used#

sold#

offered

to

sell#

or

imported

an

infringing invention or 

its e$uivalent One also commits indirect infringement if he activel! and *nowingl! induces another to infringe# and is liable for that infringement T!pes of .indirect infringement. include .contributor! infringement. and .induced infringement.  No infringement action ma! be started until the patent is issued
occurred before patent-s date of issuance This right to obtain provisional damages re$uires a patent holder to show that %3& the infringing activities occurred after the publication of the patent application# %8& the patented claims are substantiall! identical to the claims in the published application# and %& the infringer had .actual notice. of the published patent application In the U) there are safe harbor   provisions to use a patented invention for the  purposes of gathering data for a regulator! submission 

Clearance search# and clearance# validit! and enforceabilit! opinions 2 clearance search# also called freedom0to0operate search or infringement search# is a search done on issued patents or on pending  patent applications to determine if a product or process infringes an! of the claims of the issued  patents or pending patent applications 2 clearance search ma! also include e'pired art that acts as a -safe harbor- permitting the product or process to be used based on patents in the public domain These searches are often performed  b! one or more professional patent searchers who are under the direction of one or more patent attorne!s 2 clearance search can be followed b! a clearance opinion# ie a legal opinion  provided b! one or more patent attorne!s as to whether a given product or   process infringes the claims of one or more issued patents or pending patent applications Clearance opinions ma! be done in combination with a .validit! and enforceabilit!. opinion 2 validit! and enforceabilit! opinion is a legal opinion as to whether a given patent is valid and,or enforceable In other words# a #alidity opinion is a legal opinion or letter in which a patent attorne! or patent agent anal!=es an issued patent and provides an opinion on how a court might rule on its validit! or enforceabilit! Ealidit! opinions are often sought before litigation related to a patent The average cost of a validit! opinion %according to one 8??B surve!& is over F36#???# with an infringement anal!sis adding an additional F3#???

The cost of these opinions for U) patents can run from tens to hundreds of  thousands of dollars %or more& depending upon the particular patent# the number  of defenses and prior art references# the length of the prosecution file histor!# and the comple'it! of the technolog! in $uestion 2n e$culpatory opinion %setting forth reasons the patent is not infringed# or   providing other defenses such as prior use# intervening rights# or prior  invention& is also possible

Patent infringement insurance Patent infringement insurance is an insurance polic! provided b! one or more insurance companies to protect either an inventor  or a third part! from the ris*s of inadvertentl! infringing a patent (or inventors# patent infringement insurance covers legal costs in case the! have to sue an infringer to enforce their patent (or third parties# patent infringement insurance covers their legal costs in case the! are sued for patent infringement b! an inventor Patent infringement insurance is generall! considered too e'pensive to be worth the cost The premiums must be high# however# due# at least in part# to the high legal costs of patent infringement cases 2 t!pical patent infringement case in the U) costs 3 0  million dollars in legal fees for each side This is despite the fact that 44G of all patent infringement cases are settled 1egal fees in  pharmaceutical cases can run ? million dollars or more# although this should  be contrasted with the fact that billions of dollars ma! be at sta*e In >une 8??A# a )tud! for the +uropean Commission on the feasibilit! of   possible insurance schemes against patent litigation ris*s was published The report concluded that the continuation of the status $uo with ver! little# disproportionatel! e'pensive# bespo*e patent litigation insurance %P1I& would not meet an! ob"ectives for a feasible insurance scheme Instead# onl! a mandator! scheme was considered to be viable in order to provide the economic

and technical benefits to the +U and individual patentees which would arise from a widespread P1I scheme

Pirac! )ince the 357?s# the e'pression .patent pirate. has been used as a pe"orative term to describe those that infringe a patent and refuse to ac*nowledge the priorit! of the inventor  )amuel (  Horse# inventor of  the telegraph# for e'ample# complained in a letter to friend in 3575  I ha#e been so constantly under the necessity of %atching the mo#ements of the most unprincipled set of pirates I ha#e e#er &no%n, that all my time has been occupied in defense, in putting e#idence into something li&e legal shape that I am the in#entor of the Electro'(agnetic Telegraph)) *ould you ha#e belie#ed it ten years ago that a +uestion could be raised  on that subect-

Those who accuse others of being patent pirates sa! that the! ta*e advantage of the high cost of enforcing a patent to willfull! infringe valid patents with impunit!# *nowing that the average small inventor does not have the financial resources re$uired to enforce their patent rights In the U)# for  e'ample# an inventor must budget F3 million or more in order to initiate  patent litigation The! sa! that patent pirates also ta*e advantage of  countries where patent rights are difficult to enforce and willfull! infringe in those countries Ironicall!# the term .pirate. has also been used to describe patent owners that vigorousl! enforce their patents Thus whether one deliberatel! infringes a

 patent or whether one vigorousl! enforces a patent# the! ma! be referred to as a pirate b! those that feel the! are overstepping their bounds

Threat to bring a patent infringement action .2 threat to bring a patent infringement action is highl! li*el! to influence the commercial conduct of the person threatened# which is wh! the law of  some countries# including the U@# provides that the ma*ing of a groundless threat to sue is# within certain carefull! prescribed limits# an actionable wrong in itself. 36J This however is not the case in the United )tates

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2nton Piller order %common procedure in certain countries to obtain  proofs of infringement&

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Cease and desist order 

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Cop!right infringement

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+nforcement of +uropean patents

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Klossar! of patent law terms

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Industrial espionage

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Ine$uitable conduct

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Patent court

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Patent prosecution

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Patent retaliation %clause&

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Patent troll

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)martphone patent licensing and litigation

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)aisie0contrefaLon

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)oft IP

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)oftware hoarding

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)tic* licensing

 Notable infringement cases:

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 (onsanto Canada Inc. #. Schmeiser 0 2 Canadian farmer sued for 

growing canola seed patented b! Honsanto

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 Apple Inc. #. Samsung Electronics Co., Ltd.

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 (icrosoft #. (otorola

ibliograph!

Books and Journals    

1aw Relating to Intellectual Propert! Rights# E@ 2hu"a Ist +dition Intellectual Propert! and Ta'ation # )udhir Ra"a Ravindran Intellectual Propert! and )ustainable Development # Phillepe Cullet Internet