Assessing Patent Risks in India
• Right to make;
A person or a company will be liable for patent infringement, if he exercises any of the exclusive rights of a patent holder over a patented invention without the patent holder’s permission within the territory of India. A product or process is said to infringe a patent granted in India if the following conditions are satisfied:
• The product or process in question falls within the scope of at least one claim in the patent; and
• The person exercises the exclusive rights of the patent holder over the product or process in India without permission from the patent holder.
A product is said to be literally infringing if all elements of a patent claim are present in the product and a process is said to be literally infringing if all steps in a claim are present in the process.
Infringement by equivalence
Though a product or process is not literally infringing, it may be liable for infringement by equivalence. A product is said to be liable for infringement by equivalence, if elements in the product that differ from the patent claim are in substance equivalent to the elements in the patent claim. A process is said to be infringing by equivalence if the steps differing from those in the patent claim are in substance equivalent to those in the process claim in the patent. In other words, a product or process that includes the substance of the patented invention or the pith and marrow of the invention, would be infringing. A product will be considered to be equivalent of a patented invention, if it is similar in construction and function to the patented invention.
Determination of infringement is a mixed question of law and fact. To determine whether the product or process falls within the scope of a patent claim, the product or process has to be compared with the elements or steps in each of the patent claims. If all elements or steps of a patent claim are present in the product or process, then the product or process is said to be infringing, else it will not be infringing.
Assume that a patent claim relating to a phone reads as follows:
What I claim is
Housing Push-button dialing pad mounted within a front wall of the housing, Telephone handset having a handle comprising a earpiece at one end and a mouthpiece at an opposite end and Handset cord connecting dial pad and telephone handset.
A telephone used as a pay phone, which is incorporated in a casing. The casing has a dial pad for enabling dialing. A person may use the phone through a head set having ear phones and a microphone. The headset being wirelessly connected to the telephone in the casing.
Housing – Case and
While the claim has a handset, the product has a headset and while the claim specifies a cord to connect the handset and the dial pad, the product is connected wirelessly.
Having said that, there are two tests that are generally used to carry out equivalence analysis. The tests are:a. Function-way-result test; and
Though a product or process falls within the scope of claims, it would not be considered to be infringing if it falls within the scope of exemptions. Such exemptions include, government use, research, education, parallel imports and so on. Such exemptions must be considered while assessing infringement. I will write about them and other equitable defenses in another post.