AN ASSIGNMENT

ON “PATENT

INFRINGEMENT ”[INTEACTUAL PROPERTY

RIGHTS – II]

Name-jarrar ahmadB.A LL.B (H) 9th SemesterSECTION – ‘A’ROLL NO -13

ACKNOWLEDGMENT

I have a great pleasure in expressing my deep sense of ineptness and gratitude to my Dr S.Z.AMANI , for his valuable guidance, meticulous supervision and perpetual inspiration which provided me with the strength and zeal to complete the project work.

I also extend my gratefulness to all the people who help me in my project and to the learned authors whose works I have consulted and referred on many occasions.

Delhi JARRAR AHMAD

Contents:-

Introduction

Elements of Patent Infringement

Indirect Infringement Legislation Clearance Search, Clearance Validity and Enforceability Opinions

Patent Infringement Insurance

Piracy

Threat to bring Infringement Action

Notable Infringement Cases

Bibliography

INTRODUCTION:

Patent infringement is the commission of a prohibited act with respect to a

patented invention without permission from the patent holder. Permission may

typically be granted in the form of a license. The definition of patent

infringement may vary by jurisdiction, but it typically includes using or selling

the patented invention. In many countries, a use is required to

be commercial (or to have a commercial purpose) to constitute patent

infringement.

The scope of the patented invention or the extent of protection is defined in

the claims of the granted patent. In other words, the terms of the claims inform

the public of what is not allowed without the permission of the patent holder.

Patents are territorial, and infringement is only possible in a country where a

patent is in force. For example, if a patent is filed in the United States, then

anyone in the United States is prohibited from making, using, selling or

importing the patented item, while people in other countries may be free to

make the patented item in their country. The scope of protection may vary from

country to country, because the patent is examined by the patent office in each

country or region and may have some difference of patentability, so that a

granted patent is difficult to enforce worldwide.

Elements of patent infringement

Typically, a party (other than the patentee or licensee of the patentee) that

manufactures, imports, uses, sells, or offers for sale patented technology without

permission/license from the patentee, during the term of the patent and within

the country that issued the patent, is considered to infringe the patent.

The test varies from country to country, but in general it requires that the

infringing party's product (or method, service, and so on) falls within one or

more of the claims of the patent. The process employed involves "reading" a

claim onto the technology of interest. If all of the claim's elements are found in

the technology, the claim is said to "read on" the technology; if a single element

from the claim is missing from the technology, the claim does not literally read

on the technology and the technology does not infringe the patent with respect

to that claim.

In response to allegations of infringement, an accused infringing party will

generally assert one or more of the following:

it was not practicing the patented invention;

it was not performing any infringing act in the territory covered by the

patent;

the patent has expired;

the patent (or the particular claim(s) alleged to be infringed) is invalid,

because the invention in question does not meet patentability or includes a

formal defect, rendering the patent invalid or unenforceable;

it has obtained a license under the patent;

the patent holder is infringing patent rights belonging to the accused

infringing party, and the party may resolve the dispute in settlement or cross-

licensing.

Indirect infringement:

In certain jurisdictions, there is a particular case of patent infringement called

"indirect infringement." Indirect infringement can occur, for instance, when a

device is claimed in patent and a third party supplies a product which can only

be reasonably used to make the claimed device.

Legislation

Canada :

In Canada, patents are governed by the Patent Act (R.S.C., 1985, c. P-4).

Section 42 of the Patent Act establishes the rights of a patent holder:

42. Every patent granted under this Act shall contain the title or name of the

invention, with a reference to the specification, and shall, subject to this Act,

grant to the patentee and the patentee’s legal representatives for the term of the

patent, from the granting of the patent, the exclusive right, privilege and

liberty of making, constructing, using the invention and selling it to others

to be used, subject to adjudication in respect thereof before any court of

competent jurisdiction.

By granting the patent holder the exclusive right, privilege and liberty of

making, constructing, using, and selling the invention, the patent act establishes

that any other person making, constructing, using, or selling the patented

invention is infringing that patent. Whether there has been an infringement of a

patent is usually a question of fact.

Europe:

In Europe, patent infringement of both national patents and European

patents are essentially dealt upon by national courts. Although European patents

are granted by the European Patent Office, these European patents lead are

enforced at a national level, i.e. on a per-country basis. The European Union is

discussing the project of an EU patent (formerly called Community patent)

which would be centrally enforceable. However, this project has not concretized

into law so far.

Japan:

Infringement under the patent law in Japan is defined by Article 101 of Patent

Act (Act No. 121 of 1959), which shows the following acts shall be deemed to

constitute infringement of a patent right or an exclusive license:

(i) where a patent has been granted for an invention of a product, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product to be used exclusively for the producing of the said product as a

business;

(ii) where a patent has been granted for an invention of a product, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product (excluding those widely distributed within Japan) to be used for the

producing of the said product and indispensable for the resolution of the

problem by the said invention as a business, knowing that the said invention

is a patented invention and the said product is used for the working of the

invention;

(iii) where a patent has been granted for an invention of a process, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product to be used exclusively for the use of the said process as a business;

and

(iv) where a patent has been granted for an invention of a process, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product (excluding those widely distributed within Japan) to be used for the

use of the said process and indispensable for the resolution of the problem

by the said invention, knowing that the said invention is a patented invention

and the said product is used for the working of the invention as a business.

United Kingdom:

Infringement under United Kingdom patent law is defined by Section 60 of

the UK Patents Act 1977 (as amended), which sets out the following types of

infringement:

Where the invention is a product, by the making, disposing of, offering to

dispose of, using, importing or keeping a patented product.

Where the invention is a process, by the use, or offer for use where it is

known that the use of the process would be an infringement. Also, by the

disposal of, offer to dispose of, use or import of a product obtained directly

by means of that process, or the keeping of any such product whether for

disposal or otherwise.

By the supply, or offer to supply, in the United Kingdom, a person not

entitled to work the invention, with any of the means, relating to an essential

element of the invention, for putting the invention into effect, when it is

known (or it is reasonable to expect such knowledge) that those means are

suitable for putting, and are intended to put, the invention into effect in the

United Kingdom.

United States:

In United States law, an infringement may occur where the defendant has made,

used, sold, offered to sell, or imported an infringing invention or

its equivalent. One also commits indirect infringement if he actively and

knowingly induces another to infringe, and is liable for that infringement. Types

of "indirect infringement" include "contributory infringement" and "induced

infringement."

No infringement action may be started until the patent is issued. However, pre-

grant protection is available under 35 U.S.C. § 154(d), which allows a patent

owner to obtain reasonable royalty damages for certain infringing activities that

occurred before patent's date of issuance. This right to obtain provisional

damages requires a patent holder to show that (1) the infringing activities

occurred after the publication of the patent application, (2) the patented claims

are substantially identical to the claims in the published application, and (3) the

infringer had "actual notice" of the published patent application.

In the US there are safe harbor provisions to use a patented invention for the

purposes of gathering data for a regulatory submission.

Clearance search, and clearance, validity and enforceability opinions

A clearance search, also called freedom-to-operate search or infringement

search, is a search done on issued patents or on pending patent applications to

determine if a product or process infringes any of the claims of the issued

patents or pending patent applications. A clearance search may also include

expired art that acts as a 'safe harbor' permitting the product or process to be

used based on patents in the public domain. These searches are often performed

by one or more professional patent searchers who are under the direction of one

or more patent attorneys.

A clearance search can be followed by a clearance opinion, i.e. a legal opinion

provided by one or more patent attorneys as to whether a given product or

process infringes the claims of one or more issued patents or pending patent

applications. Clearance opinions may be done in combination with a "validity

and enforceability" opinion. A validity and enforceability opinion is a legal

opinion as to whether a given patent is valid and/or enforceable. In other words,

a validity opinion is a legal opinion or letter in which a patent attorney or patent

agent analyzes an issued patent and provides an opinion on how a court might

rule on its validity or enforceability. Validity opinions are often sought before

litigation related to a patent. The average cost of a validity opinion (according to

one 2007 survey) is over $15,000, with an infringement analysis adding an

additional $13,000.

The cost of these opinions for U.S. patents can run from tens to hundreds of

thousands of dollars (or more) depending upon the particular patent, the number

of defenses and prior art references, the length of the prosecution file history,

and the complexity of the technology in question.

An exculpatory opinion (setting forth reasons the patent is not infringed, or

providing other defenses such as prior use, intervening rights, or prior

invention) is also possible.

Patent infringement insurance

Patent infringement insurance is an insurance policy provided by one or more

insurance companies to protect either an inventor or a third party from the risks

of inadvertently infringing a patent.

For inventors, patent infringement insurance covers legal costs in case they have

to sue an infringer to enforce their patent.

For third parties, patent infringement insurance covers their legal costs in case

they are sued for patent infringement by an inventor.

Patent infringement insurance is generally considered too expensive to be worth

the cost. The premiums must be high, however, due, at least in part, to the high

legal costs of patent infringement cases. A typical patent infringement case in

the US costs 1 - 3 million dollars in legal fees for each side. This is despite the

fact that 99% of all patent infringement cases are settled. Legal fees in

pharmaceutical cases can run 30 million dollars or more, although this should

be contrasted with the fact that billions of dollars may be at stake.

In June 2006, a Study for the European Commission on the feasibility of

possible insurance schemes against patent litigation risks was published. The

report concluded that the continuation of the status quo with very little,

disproportionately expensive, bespoke patent litigation insurance (PLI) would

not meet any objectives for a feasible insurance scheme. Instead, only a

mandatory scheme was considered to be viable in order to provide the economic

and technical benefits to the EU and individual patentees which would arise

from a widespread PLI scheme.

Piracy

Since the 1840s, the expression "patent pirate" has been used as

a pejorative term to describe those that infringe a patent and refuse to

acknowledge the priority of the inventor. Samuel F. B. Morse, inventor of

the telegraph, for example, complained in a letter to friend in 1848

I have been so constantly under the necessity of watching the movements

of the most unprincipled set of pirates I have ever known, that all my time

has been occupied in defense, in putting evidence into something like

legal shape that I am the inventor of the Electro-Magnetic Telegraph!!

Would you have believed it ten years ago that a question could be raised

on that subject?

Those who accuse others of being patent pirates say that they take advantage

of the high cost of enforcing a patent to willfully infringe valid patents with

impunity, knowing that the average small inventor does not have the

financial resources required to enforce their patent rights. In the US, for

example, an inventor must budget $1 million or more in order to initiate

patent litigation. They say that patent pirates also take advantage of

countries where patent rights are difficult to enforce and willfully infringe in

those countries.

Ironically, the term "pirate" has also been used to describe patent owners

that vigorously enforce their patents. Thus whether one deliberately

infringes a patent or whether one vigorously enforces a patent, they may be

referred to as a pirate by those that feel they are overstepping their bounds.

Threat to bring a patent infringement action

"A threat to bring a patent infringement action is highly likely to influence

the commercial conduct of the person threatened, which is why the law of

some countries, including the UK, provides that the making of a groundless

threat to sue is, within certain carefully prescribed limits, an actionable

wrong in itself."[15] This however is not the case in the United States.

Anton Piller order (common procedure in certain countries to obtain

proofs of infringement)

Cease and desist order

Copyright infringement

Enforcement of European patents

Glossary of patent law terms

Industrial espionage

Inequitable conduct

Patent court

Patent prosecution

Patent retaliation (clause)

Patent troll

Smartphone patent licensing and litigation

Saisie-contrefaçon

Soft IP

Software hoarding

Stick licensing

Notable infringement cases:

Monsanto Canada Inc. v. Schmeiser - A Canadian farmer sued for

growing canola seed patented by Monsanto.

Apple Inc. v. Samsung Electronics Co., Ltd.

Microsoft v. Motorola

Bibliography

Books and Journals

Law Relating to Intellectual Property Rights, VK Ahuja Ist Edition

Intellectual Property and Taxation , Sudhir Raja Ravindran

Intellectual Property and Sustainable Development , Phillepe Cullet

Internet