IP Risk Management/ A presentation at Seminar on IP for Business Advantage and R&D Development- Dr. Kalyan C Kankanala Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. IP Risk Management
Dr. Kalyan C. Kankanala
kalyan@bananaip.com
Web: www.bananaip.com
Blog: www.bananaip.com/sinapse-blog

2. Risk Sources
• Internal
• Generation
• Excavation
• Protection
• Management
• External
• Infringement
• Transactions

3. •Patent Risks

4. •Patent Risks

5. Patent Rights
• Territory
• Product Patent - Make, Use,
Sell, Offer for Sale and
Import.
• Process patent - Use

6. Infringement
• Types
– Direct
•Literal
•Equivalent
– Indirect

7. Direct Infringement
• Claim Construction
• Comparison
• Claim by claim - element by
element

8. 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.

9. 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.

10. Claim Elements
• Base
• Solid rod
• Rotor
• 3 Wings

11. 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.

12. 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

13. 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

14. 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

15. NTP v. RIM
• Black Berry Technology
• RIM held liable for
infringement
• Damages – 612 million
dollars

16. Indirect Infringement
• Contributory Infringement
• Inducement to infringe

17. Defenses
• Government use
• Research Exemptions
• Experiments or education
• FDA approval
• Other Defenses

18. Steps
• FTO Search and Analysis
• Infringement analysis
• Technology Landscape

19. 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?

20. 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?

21. • Trademark Risks

22. Trademark Rights
• Right to use
• Right to obtain relief

23. Trademark
Infringement
• Registered trademark
• Identical or Deceptively
Similar marks
• Identical or similar goods or
services
• Likelihood of confusion
• Famous mark

24. Passing Off
• Misrepresentation
• Course of trade
• Consumers
• Injury to business or good
will
• Actual damage

25. Ganga Foundry Vs.
Ganga Engineering
Works
• Registered trademark “GANGA”
- manufacture and selling of
electric motors and pump sets
including submersible pump
sets.
• Defendant selling the same
products under the same
trademark.
• Held liable for infringement.

26. Horlicks Limited Vs.
Kartick Sadhakan
• Horlicks Trademark - energy
boosting products
• Defendant - Toffee
• Held liable for passing off

27. Adobe Vs. Rohit
• Registered domain name
– www.adobe.org
• Held – Domain Name
registration not
authorized
• Restrained from use
• Punitive damages – Rs. 5
lakhs

28. • Copyright Risks

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

30. Copyright
Infringement
• Any person
• Without license
–Owner
– Registrar
• In contravention of
conditions of license
• Violates exclusive rights

31. Copyright
Infringement
• Existence of copyright
• Ownership
• Copying
– Access
– Substantial similarity

32. Indirect Infringement
• Contributory infringement
• Vicarious infringement

33. Defenses
• Ideas
• Facts
• Work in Public Domain
• Fair dealing or Fair Use

34. Mackie v. Rieser
• Image of an artist's
sculpture included in
brochure
• Held liable for copyright
infringement
• Damages - 1, 000 dollars

35. Silver Ring Splint v.
Digisplint
• Jewelry manufacturer -
Website, Catalog and
Handbill
• Alleged that defendant's
website and catalog
violated copyright
• Held liable

36. • Trade Secret Risks

37. Misappropriation
• Conduct which results in
obtaining trade secret
information by improper means
constitutes misappropriation.
• ‘Improper means’
• Criminal Conduct
• Breach of Contract
• Tortuous liability

38. Defenses
• Reverse Engineeing
• Independent Creation

39. Risk Management
• Risk Assessment and Categorization
• Actions
• Search and FTO Analysis
• Technology Landscaping
• Options
• Work around
• Collaborate
• License
• Infringe
• Defend

40. •Thank you
For More Details Visit
Web: www.bananaip.com
Blog: www.bananaip.com/sinapse-blog
Email: contact@bananaip.com