Patent Exhaustion in India
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Transcript of Patent Exhaustion in India
Patent Rights
Make Use Sell Offer for Sale Import Process – Use
Patent Exhaustion
Concept Philosophy
Example
Neo holds a patent over a car that can travel on land and air. Trinity purchases the car from him and sells it to Neo's competitor Smith. Neo files a suit against Smith for patent infringement.
Is Smith Liable?
Classification
National Regional International
Scope of Exhaustion
Direct SaleUnconditionalConditional
Sale by Licensee Sale or License of components
Example
Neo sells his patented car that can travel on land and water to Trinity with a condition that the car cannot be re-sold. Trinity re-sells the car to Smith. Neo files a patent infringement case against Smith.
Is Smith liable?
Example
Neo grants a license to manufacture and use his licensed car to Trinity for a lumpsum and running royalty. Trinity uses the car for some time and sells it to Smith. Neo sues Smith for patent infringement.
Is Smith liable?
Example
Neo grants a license to make and sell his patent over the electronic sensor used in breaking systems of cars to Trinity. He holds a patent over the breaking system with electronic sensor also. Trinity makes and sells such electronic sensors to Smith, who makes breaking systems incorporating them. Neo sues Smith for infringement of both his patents.
Is Smith liable?
Exception
Repair and Reconstruction
Example
Neo sells a car that can travel on land and water to Trinity. The car has a patented convertible top. While driving in Bangalore a tree falls on the car and the convertible top breaks. Trinity approaches Smith, who replaces the broken parts of the convertible top. Neo sues Smith for infringement
Is Smith liable?
Exhaustion in India
Implied License Parallel Imports
Sec. 107A "For the purposes of this Act,-
….(b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights."
Interpretation
Patented Products Duly authorized under the law Produce and sell or distribute
Contractual Circumvention License Grant Limitations Use limitations
Field limitations Territory
Term restrictions Notice to buyers Restrictions beyond patent rights
Non-patented articles - Use or Purchase
Exclusive grant backCovenants not to sue and so on.
References
Sections 48, 107A(b) and 140, The Patent Act, 1970 as last amended in 2005.
John Wiley and Sons Inc. and Ors. Vs. Prabhat Chander Kumar Jain and Ors., MANU/DE/1442/2010
United States v Univis Lens Co, 316 U.S. 241, 250 (1942) Quanta v. LG, 553 U.S. 617, 128 s. Ct 2109 (2008) Betts v Wilmott, (1870-71) LR 6 Ch App 239 Société Anonyme des Manufactures de Glaces v .
Tilghman’s Patent Sand Blast Company,(1884) LR 25 Ch D1.
Thomas v. Hunt, (1864) 17 CB (NS) 183 Sterling Drug v CH Beck, [1972] FSR 162 Minnesota Mining & Manufacturing v Geerpres Europe,
[1973] FSR 133. Dunlop Pneumatic Tyre v Neal, [1899] 1 ch 807, (1899)
16 RPC 247.
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