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Trademarks: Cargo company wins battle to have Intel in its trade name - BananaIP

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Trademarks: Cargo company wins battle to have Intel in its trade name - 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

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Trademarks: Cargo company wins battle to have Intel in its trade name - BananaIP

  1. 1. BananaIPCounsels
  2. 2.  Motorola – Google  Deal: 12.5 Billion  Patent PortfolioValue: approx. $4billion (33%)  RIM  Company’sValuation: $2.5 Billion  Patent PortfolioValue: $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)  PortfolioValuation: Approximately $1 Billion  Deal: $4.5 Billion (450%) Note : Figures based on data generally available on the internet. © 2012 BananaIP Counsels23 November 2015
  3. 3.  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 Counsels23 November 2015
  4. 4.  Strategic business advantage  Preventing competition from doing same stuff  Increase valuation of an organization  Bring licensing revenues © 2012 BananaIP Counsels23 November 2015
  5. 5. 1. Obtaining patent rights 2. Avoiding third party patent infringement © 2012 BananaIP Counsels23 November 2015
  6. 6.  Filing of application for patent  What inventions to file?  Publication – rights start  Grant – rights are enforceable  Pre-filing recommendations  Check for patentability © 2012 BananaIP Counsels23 November 2015
  7. 7.  Subject matter  Utility  Novelty  Non-obviousness / Inventive step  Specification © 2012 BananaIP Counsels23 November 2015
  8. 8.  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 Counsels23 November 2015
  9. 9.  Industrial application  Capable of being made or produced in an industry  Present use  Relatively one of the easiest requirement to fulfill. © 2012 BananaIP Counsels23 November 2015
  10. 10.  New in light of what is already existing  Rule - compare one prior art at a time © 2012 BananaIP Counsels 23 November 2015
  11. 11.  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 Counsels23 November 2015
  12. 12.  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 Counsels23 November 2015
  13. 13.  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 Counsels23 November 2015
  14. 14.  Patent procedure followed  Publication  Examination  Grant of patent  Follows All rule for grant  Fig: Kalyan’s Patent filter model © 2012 BananaIP Counsels23 November 2015
  15. 15.  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 Counsels23 November 2015
  16. 16.  Invention  Chair with wheels  Prior art  Chair  Wheels for toys  Patentable? © 2012 BananaIP Counsels23 November 2015
  17. 17.  Invention  Voice mailbox  Prior art  Telephony  Voice recorders  Patentable? © 2012 BananaIP Counsels23 November 2015
  18. 18.  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. 23 November 2015 © 2012 BananaIP Counsels
  19. 19.  PriorArt 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. 23 November 2015 © 2012 BananaIP Counsels  PriorArt 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.
  20. 20. Invention Prior art 1 Prior art 2 Base √ √ Water outlet √ X Closure member X √ 23 November 2015 © 2012 BananaIP Counsels
  21. 21.  Rights of patentee  Make  Use  Sell  Offer for sale  Import  Negative rights  Infringement © 2012 BananaIP Counsels23 November 2015
  22. 22.  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 Counsels23 November 2015
  23. 23.  Direct infringement  Literal infringement  Doctrine of equivalence  Indirect infringement  Contributory infringement  Induced infringement 23 November 2015 © 2012 BananaIP Counsels
  24. 24.  Claim construction  Comparison  Claim by claim - element by element analysis © 2012 BananaIP Counsels23 November 2015
  25. 25.  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 Counsels23 November 2015
  26. 26.  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 Counsels23 November 2015
  27. 27. 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 ▪ 3Wings 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 Counsels23 November 2015
  28. 28.  “ 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 Counsels23 November 2015
  29. 29. 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 Counsels23 November 2015
  30. 30. PATENT  “What I claim is a gel composition for treatment of pain comprising; 2-10 % by weight Benzocaine; and propyl 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 Counsels23 November 2015
  31. 31.  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 Counsels23 November 2015
  32. 32.  Black BerryTechnology  ‘communication’ – does the word also include wireless communication and not only wired communication.  Settled – 612.5 million dollars paid by RIM © 2012 BananaIP Counsels23 November 2015
  33. 33.  Kodak - Exclusive supplier of negatives for Polaroid cameras (from 1963 until 1969)  Polaroid chose to manufacture its own instant film.  The Kodak enters instant camera with 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) 23 November 2015 © 2012 BananaIP Counsels
  34. 34.  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 Counsels23 November 2015
  35. 35.  Work around  Collaborate  License  Infringe  Defend  Challenge © 2012 BananaIP Counsels23 November 2015
  36. 36.  Obtain patent rights  Mandatory OR optional?  Avoid third party patent infringement  Mandatory OR optional? © 2012 BananaIP Counsels23 November 2015
  37. 37.  SiNApSE blog  www.sinapseblog.com  Online IP courses  www.onlineipcourses.com  Radio SiNApSE  www.radiosinapse.com  Newsletter  www.ipconvergence.in 23 November 2015 © 2012 BananaIP Counsels

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