Patent: A Presentation on IP Risk Management - Dr. Kalyan C Kankanala - BananaIP BananaIP Counsels, formerly Brain League IP Services, founded in 2004 at the Indian Institute of Management (IIM) Bangalore’s incubation center (NSRCEL), is recognized as an IP/Patent trailblazer in India. The firm’s mission is to help clients maximize business value from their Intellectual Property (IP)/Patents, and gain competitive advantage in the market place. In its evolution from Brain League, BananaIP carries forward the firm’s core values – Merger of Technology,Management and Law, Swift Adaptation to changes in competitive environment, and business driven approach to Intellectual Property (IP)/Patent Services. 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
url: www.bananaip.com
Blog: www.indianipinfo.blogspot.com
Radio: www.sinapse.intellectureindia.com/radio

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

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

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. • Trade Secret Risks

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

23. Defenses
• Reverse Engineeing
• Independent Creation

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

25. 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

26. • Thank you