A presentation on FTO and Infringement Analysis 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. Vikram Pratap Singh Thakur
17 September 2014 © 2010 BananaIP

2.  Infringement
 Types
 Defenses
 FTO analysis
 Why
 Challenges
 Methodology
17 September 2014 © 2010 BananaIP

3.  Rights
 Make
 Use
 Sell
 Offer for sale
 Import
 Infringement
17 September 2014 © 2010 BananaIP

4.  Term
 Territorial
 Claims
17 September 2014 © 2010 BananaIP

5.  Direct infringement
 Literal infringement
 Doctrine of equivalence
 Indirect infringement
 Induced infringement
 Contributory infringement
17 September 2014 © 2010 BananaIP

6.  Claim Construction
 Intrinsic factors
 Extrinsic factors
 Comparison
 Claim by claim - element by element
17 September 2014 © 2010 BananaIP

7. PATENT
 “ What I claim is 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.“
17 September 2014 © 2010 BananaIP

8. PATENT
 “ What I claim is a gel
composition for treatment
of pain comprising;
10 % by weight Benzocaine
in atleast in part as the free
base; and
propyl paraben.“
PRODUCT
 “ A gel for treating
neuropathies causing pain
at a site by inducing
analgesia. The gel is
administered
intradermally. The gel has
2-10 % by weight of
Benzocaine and methyl
paraben.“
17 September 2014 © 2010 BananaIP

9.  Equivalents of a claim
 Function
 Way
 Result
17 September 2014 © 2010 BananaIP

10. PATENT
 “ What I claim is a gel
composition for treatment
of pain comprising;
10 % by weight Benzocaine
in atleast in part as the free
base; and
propyl paraben.“
PRODUCT
 “ A gel for treating
neuropathies causing pain
at a site by inducing
analgesia. The gel is
administered
intradermally. The gel has
2-10 % by weight of
Benzocaine and methyl
paraben.“
17 September 2014 © 2010 BananaIP

11.  Prosecution History Estoppel
 Eg.
 a filtering process for the purification of a dye
solution
 Amendment by patentee (pH 6-9)
 Alleged infringing process (pH 5)
 Doctrine of equivalence ?
17 September 2014 © 2010 BananaIP

12.  Hilton Davis v. Warner Jenkinson case
 Amendment during prosecution:
 purpose not related to patentability
demonstrated – court decides based on purpose
 Patent holder unable to establish purpose –
estoppel applies
17 September 2014 © 2010 BananaIP

13. PATENT
 pH – 3-6
 Hypothetical claim analysis
test
PRIOR ART
 pH – 10 and above
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14.  Induced Infringement
 Contributory Infringement
17 September 2014 © 2010 BananaIP

15.  Katrina, a graduate of IISc, develops a
molecule for treating AIDS. She acquires a
patent for the same and is also recognized as
the inventor of the year by the Indian
government. Teddy, a company based out of
Bangalore sells an intermediate to the said
molecule.
 Katrina sues Teddy.
 Infringement?
17 September 2014 © 2010 BananaIP

16.  Process of treating dry fruits
 Comparison
 Sulphuric Acid - Washing Soda
 muriatic acid - Acetic acid
 Sulphur dioxide fumes under pressure -
Sulphur dioxide fumes without pressure
17 September 2014 © 2010 BananaIP

17.  Dizer gets a patent on a drug for AIDS and a method
for making the kit in USA, India and Bangladesh.
Sachin decides to research further to come up with
a process which will be cost-effective. He
manufactures the patented product in his lab and is
able to comes up with the improved cost effective
process.
 Is Sachin liable for patent infringement?
17 September 2014 © 2010 BananaIP

18.  Patent Invalid
 Subject Matter
 Utility
 Novelty
 Non-obviousness
 Specification
17 September 2014 © 2010 BananaIP

19.  Government Use
 By or For
 Research Exemptions
 Experiment
 Regulatory Approval
 Parallel Imports
 Inequitable Conduct
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20. 17 September 2014 © 2010 BananaIP

21.  Launch product
 Launch generic products
 R&D focus
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22.  1 product – many patents
 Eg. Temodar -TEMOZOLOMIDE
Patent No. Filing Date Priority Date Estimated
17 September 2014 © 2010 BananaIP
Expiry Date
5,260,291 October 18,
1991
Aug 24, 1981 Nov 9, 2010
6,987,108 February 21,
2003
Feb 22, 2002 Feb 22, 2022

23.  Patent term extension
Patent No. Filing Date Priority
 Term extension accessibility
 Easily accessible - US, Europe
 Not easily accessible – Russia
17 September 2014 © 2010 BananaIP
Date
Estimated
Expiry Date
Expiry date
(including
extension)
5,260,291 October 18,
1991
Aug 24,
1981
Nov 9, 2010 Aug 11,
2013
6,987,108 February 21,
2003
Feb 22,
2002
Feb 22,
2022
Sep 8, 2023

24.  Renewal status
 Renewal data accessibility
 Easily accessible - US, Europe
 Not easily accessible – Brazil, Mexico
17 September 2014 © 2010 BananaIP

25.  Difference in Law
 Regulatory procedure
 Patent act
 Patent term date – priority or filing
 Priority – India
 Filing –Turkey, Russia
 Change in law – term changes
 USA – June 8, 1995
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26.  Access to databases
 Language
 Case Law
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27.  Multiple National attorneys
 Carry out on own
 In house
 External counsels
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28.  US, Europe, WIPO
 Regulatory Search
 Proprietary Database search
 National country database search
 Contact Local Attorney for details
17 September 2014 © 2010 BananaIP

29. www.bananaip.com
www.bananaip.com/sinapse-blog
contact@bananaip.com
17 September 2014 © 2010 BananaIP