Dr. Kalyan Kankanala, Senior Partner, BananaIP Counsels, delivered a class on {inset Slide title}, for National Law School of India University, Bangalore.

1. Copyright, BananaIP (BIP) Counsels, 2021
Patent Defenses
Dr. Kalyan C. Kankanala
BananaIP Counsels
contact@bananaip.com

2. Patent Invalidity
• Patentability
• Prior Art - Gillette Defense
• Wrongful Obtainment
• False Representation/Information
• Secret Use
• Section 8 - IUFA (Information and Undertaking
with respect to Foreign Applications)
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3. Example
X acquires a patent on a method of styling hair based on the
texture and the length of one’s hair. Y, a hair stylist, uses the method
to service clients and publishes a video of the same on YouTube. X
sues Y for patent infringement.
Y claims patent invalidity based on prior public knowledge and use.
She states that hair stylists have been using the technique for a long
time.
Y claims that she is not infringing the patent because what she is
doing was being practiced for several centuries. She produces
ancient documents regarding the same.
Does Y have valid defenses? Is she liable for patent infringement?
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4. Example
X’s patent application gets rejected in Europe, but X does not
inform the Indian Patent Office.
X’s patent application in the United States gets granted, and X does
not inform the Indian Patent Office.
X’s patent application gets published in Singapore, but X does not
get an update from the Singapore attorney. Therefore, X does not
disclose the same to the Indian Patent Office.
Y challenges validity of X’s patent on all the above grounds. Is the
patent invalid based on any of the grounds?
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5. Research Exemption
• Machine, Apparatus or any other Article - Make
and Use
• Process - Use
• Research or Experiment
• Instruction to Pupils
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6. Bolar Exemptions
• Product - Make, Construct, Use, Sell and Import
❖ Submission and Development of Information.
❖ Required under any Regulatory Law
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7. Example
XBio wishes to launch a vaccine as soon as the patent on the
vaccine expires. Towards the said end, it initiates clinical studies and
trials while the patent is valid. Some of its studies are conducted in
China. To facilitate the same, XBio sends the vaccine to a Chinese
company.
Aggrieved, YPharma, the patent holder of the vaccine sues XBio for
patent infringement.
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8. Government Use
• Machine, Apparatus and Other Article - Make and Import
• Process – Use
❑ Government’s Own Use
❑ On behalf of the Government for its Own Use
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9. Example
DayLight owns a patent for implementing day lighting systems in old
buildings. The Railway Department publishes a tender calling for
proposals to implement day lighting solutions in Bangalore railway
stations. DayLight bids for the same, but does not get selected.
The selected company, SunLight, uses DayLight's patent for
implementing day lighting systems. Aggrieved, DayLight sues
SunLight and the Railway Department.
Are SunLight and the Railway Department liable?
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10. Parallel Imports
• Importation
➢ Patented Products
➢ From a Person Authorized - Produce and Sell or Distribute
➢ Authorized under the Law
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11. Example
Public Labs, a company head quartered at Mysore, places an order with a
lab in Israel to make Covar to combat the ongoing COVID-19 crisis in India.
Covar is patented by India Bio, a vaccine company, and ICMR. Covar is not
patented in Israel.
The Israeli company delivers one million doses of the vaccine to Public Labs,
which distributes the same to private hospitals for free. Aggrieved, India Bio
and ICMR sue Public Labs for patent infringement.
Is Public Labs liable?
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12. Download Dr. Kalyan’s books
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13. Thank You
Contact us
BananaIP Counsels
No 40, 2nd floor, JC Industrial Estate,
3rd Main Road, Kanakapura road,
Bangalore – 560062.
Email: contact@bananaip.com
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Copyright, BananaIP (BIP) Counsels, 2021