Analyzing IP RisksDr. Kalyan C. Kankanala

Email: kalyan@bananaip.comBlog: www.sinapseblog.com

Course: www.onlineipcourses.com

•Patent Risks

Patent Rights

• Territory• Product Patent - Make, Use,

Sell, Offer for Sale and Import.• Process patent - Use

Infringement

• Literal Infringement• Infringement by Equivalence

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– Function– Way– Result

• Prosecution History Estoppel

Example

•Trademark Risks

Trademark Infringement

• Registered trademark• Identical or Deceptively Similar

marks• Identical or similar goods or

services• Likelihood of confusion

• Famous mark

Passing Off

• Misrepresentation• Course of trade • Consumers• Injury to business or good will• Actual damage

Cable News Network Vs. Cam News Network

• CNN - World news on electronic media

• Defendant - Printing and publication of news, journals and magazines - ‘CAM News Network (CNN on cover page)

• Held passing off - Injunction granted

Horlicks Limited Vs. Kartick Sadhakan

• Horlicks Trademark - energy boosting products

• Defendant - Toffee• Held liable for passing off

Adobe Vs. Rohit

•Registered domain name – www.adobe.org

•Held – Domain Name registration not authorized

•Restrained from use•Punitive damages – Rs. 5

lakhs

•Copyright Risks

Copyrights• Reproduce• Adapt• Distribute• Derivative works• Public Display• Public Performance

• Moral Rights

Copyright Infringement

– Without Permission– Exercises Rights

– Access– Copying

Defenses

• Ideas• Facts• Work in Public Domain• Fair dealing or Fair Use

Mackie v. Rieser

• Image of an artist's sculpture included in brochure

• Held liable for copyright infringement

• Damages - 1, 000 dollars

Silver Ring Splint v. Digisplint

• Jewelry manufacturer - Website, Catalog and Handbill

• Alleged that defendant's website and catalog violated copyright

• Held liable

Amarnath case

• Sculpture• Mutilated• Moral rights

• Thank you• kalyan@bananaip.com• www.sinapseblog.com• www.ipracademy.com

• www.onlineipcourses.com