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Minimising patent infringement risk
The document discusses ways to minimize patent infringement risk. It recommends conducting a freedom-to-operate search or clearance study before launching a new product to assess potential infringement of existing patents. The search involves identifying patents related to each component, claim mapping, and an opinion on infringement risk. It also discusses assessing the validity, legal status, and expiry of relevant patents to determine options like taking a license, waiting for expiry, or risking infringement.
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Minimising patent infringement risk
- 1. Minimizing Patent Infringement Risk BinduSharma Origiin IP Solutions LLP Email: bindu@origiin.com Ph: 9845693459
- 2. Boston University Sues AppleFor Alleged Patent Infringement • The patent in question was assigned to the Trustees of Boston University in November 1997 • The University is alleging that the iPhone 5, iPad, and MacBook Air use a semiconductor it received a patent for in 1997, and is asking for a ban on selling some Apple products as well as a slice of the company's profits.
- 3. Philips v Anantand Futuristic Anant Electronics and Futuristic Concepts Media Ltd were using “digital transmission system” technology to manufacture VCDs In India, Philips had a patent protection on this technology Delhi High Court ordered the two Indian companies to stop manufacturing the VCDs that infringed Philip’s “digital transmission system” LESSON: Using technology protected by another company can drive you out of business 3
- 4. How does infringement happen? Whatprecautions can be taken to minimizing this infringement risk?
- 5. Protection of IntellectualProperty is important but it is even more important to respect IP that belongs to third party (ies). Initial due-diligence, before product launch can be immensely useful for your business to avoid undesirable surprises in future and to have mental peace.
- 6. Rights of patentholder Making Using Selling Offering for sale Importing
- 7. Violation of rightsof patentee is Patent infringement
- 8. Question: Can weminimize the infringement risk? Answer: Yes, you can. How? Clearance study (Freedom-to-operate Search)
- 9. Starting with FTO/Clearance search Doneto assess and minimize risk of patent infringement Jurisdiction specific Valid patents are taken into consideration
- 10. Steps: FTO/Clearance search Segregationand nomenclature of the components Identify patents/applications related to each component Claim mapping Opinion on infringement risk as per national laws
- 11. Legal status ofthe patents identified Jurisdiction specific search Check for the chances of patent being filed in desired jurisdiction Differentiate between abandoned, lapsed and expired patents Calculation on term of patent Check for other forms of IP Don’t miss PCT applications Timeline: 22 years atleast Monitor applications periodically
- 12. Bypass options Take license,if feasible 1 Assess strength of the patent (s) likely to be infringed 2 Calculate expiry date of patent (s) 3 Study assignee track record 4 You may want to take some risk 5
- 13. Validity of patents •Lack of novelty, Industrial use, inventive step • Best mode • Falls under inventions not patentable • Prior art search • Claim mapping • Opinion with respect to national laws • Opposition vs revocation
- 14. Invalidation of patentofficially • Opposition • Pre-grant • Post-grant • Revocation
- 15. Conclusion • Assessment ofpatent infringement risk is important before a product launch • Its possible to minimize this risk • Freedom-to-operate search could be a good way to do it
- 16. Our services IP Analyticsand market research IP filing/prosecution IP valuation & commercialization Trademark, contract, copyright, design Customized corporate trainings
- 17. info@origiin.com (for IPservices) info@origiinipa.com (for IP trainings) Subscribe to our
Editor's Notes
- #2 Hello friends, This video, “Minimizing Patent Infringement Risk” is brought to you by Origiin IP Solutions Bangalore, a leading intellectual property and legal firm in India. My name is Bindu Sharma and I request you to watch this video till the end. Like and share this video and subscribe to our youtube channel so that you don’t miss any further updates from us.
- #3 Lets start this presentation with a case study. Boston University Sues Apple For Alleged Patent Infringement. In this case……………
- #4 In another case…Philips v Anant and Futuristic---------------- These cases indicate that if proper due diligence is not done before launching a product in the market, it could be risky in terms of infringement of third party’s IP rights
- #5 Here it is important to understand that…..
- #6 We always emphasise upon protection of intellectual property but ignore the other side of it. READ FROM SLIDE
- #7 Before we proceed further, lets understand rights of patent holder. Its important here to know that patent rights are territorial, which means that an Indian Patent is enforceable only in India and similarly a US patent is enforceable only in the US. A patent holder has right to prevent third parties from --------patented product in the country where he has patent protection. Or we can say that if you want to manufacture a product in India and there exists a patent that you might infringe, the owner of that patent can prevent you from----- that product in India
- #8 Patent infringement as such has not be defined in the patents act but violation of rights of a patent holder is patent infringement.
- #18 Thank you for watching this video. For any queries related to your trademark or requirement of legal services you can contact us. Email ID and phone number is given in the video description. Thank you.