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Assessing patent risks in India

BananaIP Counsels > Intellectual Property  > Assessing patent risks in India

Assessing patent risks in India

First Publication Date: 27th January 2010
This post is in furtherance of Kartik’s post titled “Patent infringement analysis or FTO analysis in India – Challenges” relating to performing patent infringement and FTO analysis in India. Through this post, I wish to explain the basic steps for assessing patent risks.
Patent activity has been growing in India at a steady rate. Increase in patent filings/grants and litigation indicates the growing interest of corporates to protect and enforce patents. Under such circumstances, assessing patent risks with respect to development and launch of products assumes great importance. Though the jurisprudence with respect to patent infringement is still evolving in India and access to patent documents is limited patent risk analysis is necessary to avoid huge losses.
As it can be seen from the Bajaj/TVS litigation, losses related to patents do not necessarily result only from damages granted by courts. In the said case, TVS was put under great loss due to a temporary injunction issued against the sale of its bike called, ‘Flame’, after pumping large sums of money into product development and launch. The case reiterates the fact that patent infringement assessment must be done at a very preliminary stage such as making plans for product development, devising research programs, product launch plan formulation and so on. Having said that, litigation may still ensue after such assessment and infringement is a mitigative measure rather than a preventive measure.
Having set the context, I will now throw light on how patent infringement analysis may be performed. In order to analyze patent infringement, a person must first note the rights granted by a patent.
A product patent grants the following exclusive rights:
• Right to make;
• Right to use;
• Right to sell or offer the product for sale; and
• Right to import the product into India
The exclusive rights allow a patent holder to prevent any person from exercising the said rights over a product the forms part of the patent without his permission. A process patent grants the exclusive right to prevent third parties from using the method or process in India. It also grants the right to prohibit third parties from making, using, selling, offering for sale or importing a product that is obtained from the process in India.
It must be noted that the exclusive rights are granted only within the territory of the country where a patent is granted for a period of twenty years. So, if a patent is granted in India, the exclusive rights will be applicable for India only. Rights will be available in other countries only if patents are granted in those countries.
Infringement of a Patent
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.
Infringement of a patent may be either literal infringement or infringement by equivalence.
Literal Infringement
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.

Assessing infringement
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.
Example:
Assume that a patent claim relating to a phone reads as follows:
What I claim is
A phone comprising
a housing,
a push-button dialing pad mounted within a front wall of the housing,
a telephone handset means being a handle comprising a earpiece at one end and a mouthpiece at an opposite end and a handset cord electrically connected between the push-button dialing pad and the telephone handset.
The claim has the following elements:
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.
Assume that a person makes the following product:
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.
In order to be infringing all elements of the claim must be present in the product literally or by equivalence. On comparing the claim elements with the product, it can be seen that the following elements are present:
Housing – Case and
Dial pad – Dial pad.
However, the following elements are absent in the product:
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.
In such a situation, the product would not be literally infringing as two of the elements are not present in the product. However, if the differing elements, which are the headset and the wireless connection in the product are equivalent to handset and connection through cord, there would be infringement by equivalence. To determine equivalence, India does not follow a clear test. The case law broadly states that the differing elements must be in substance equivalent. Therefore, there is ambiguity with respect to equivalence.
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

b. Obviousness test.
As per the function-way-result test, if the differing elements perform substantially the same function in substantially the same way to produce substantially the same result, the elements are said to be equivalent and therefore, infringing. In the example, one differing element, which is the headset instead of handset, performs substantially the same function, which is enabling a person to speak and hear in substantially the same way by receiving and transferring voice messages to produce the same result of telephone conversation, it can be said to be an equivalent of the claim element. However, the other differing element, which is wireless connection instead of connection is not equivalent because the way in which the function is performed is different. Therefore, there would not be infringement by equivalence.
As per the obviousness test, if the differing elements in the product are obvious to a person skilled in the art, then the elements are said to be equivalent and the product is said to be infringing. In the present example, the first differing element, which is headset would be obvious to a person skilled in the art in the light of the handset and is therefore not equivalent. However, the wireless connection would not be obvious in the light of cable connection and is therefore, not equivalent. Therefore, the product would be non-infringing even under this test.
If in the example, the product’s headset is connected by cord instead of wireless connection, the product would be infringing because the said element would be literally present and the differing elements would be present by equivalence.
Please note here that infringement analysis by equivalence is very subjective and may be susceptible to multiple interpretations. Furthermore, the analysis provided in this note is a generic level analysis and technology details must be reviewed before a conclusion is made.
To summarize, in order to be infringing, all elements in at least on patent claim must be present in a product literally or by equivalence. In addition, for infringement to exist the exclusive rights of the patent holder must be violated within the territory of India.
Defenses
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.

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