Trademarks: Cargo company wins battle to have Intel in its trade name - BananaIP

 Motorola – Google
 Deal: 12.5 Billion
 Patent PortfolioValue:
approx. $4billion (33%)
 RIM
 Company’sValuation: $2.5
Billion
 Patent PortfolioValue: $1
Billion (40%)
▪ If it continues to
manufacture/ sell its phones
 Kodak
 Company’s valuation:
$576million
 Patent Portfolio: $3 Billion
 Nortel- Apple, RIM, Sony,
Microsoft (for Nortel’s
Patent Portfolio)
 PortfolioValuation:
Approximately $1 Billion
 Deal: $4.5 Billion (450%)
Note : Figures based on data generally available on the internet.
© 2012 BananaIP Counsels23 November 2015

 IBM, for 19 consecutive years is said to have
the highest Patent Portfolio in the United
States, followed by Samsung, Cannon ,
Panasonic, Microsoft, etc
 IBM is said to approximately garner a
whopping $1billion from its Patent Portfolio
every year by licensing the same.
 Google deal

 Strategic business advantage
 Preventing competition from doing same stuff
 Increase valuation of an organization
 Bring licensing revenues

1. Obtaining patent rights
2. Avoiding third party patent infringement

 Filing of application for patent
 What inventions to file?
 Publication – rights start
 Grant – rights are enforceable
 Pre-filing recommendations
 Check for patentability

 Subject matter
 Utility
 Novelty
 Non-obviousness / Inventive step
 Specification

 Inclusion list
 Product
 Process
 Exclusion list
 Sec 3 and 4
 Not patentable examples
 Perpetual motion machine
 A new theory
 Sweet lime juice
 Wrist watch with compass

 Industrial application
 Capable of being made or produced in an industry
 Present use
 Relatively one of the easiest requirement to
fulfill.

 New in light of what is already existing
 Rule - compare one prior art at a time
© 2012 BananaIP Counsels
23 November 2015

 Inventive step
 Technically advanced or has economic
significance; and
 Not obvious to a person skilled in the art
 Person skilled in the art

 Problem-solution approach
 Identify the problem
 Proposed solution obvious in light of existing ones
 Secondary indications
▪ Commercial success
▪ Copying
▪ Praise by experts
▪ Unexpected results
▪ Long felt need
 Rule - combine all relevant prior art references

 Meet all the guidelines specified in the act
 Written description
 Describe in a detail manner
 Enablement
 Capable of being worked independently by a
person having skill in the art

 Patent procedure
followed
 Publication
 Examination
 Grant of patent
 Follows All rule for
grant
 Fig: Kalyan’s Patent filter model

 All requirements can broadly be classified under 3 stages
 Stage 1 – Pre-search stage
 Subject matter
 Utility
 Stage 2 - Patentability assessment search and analysis
 Novelty
 Non-obviousness
 Stage 3 - Application drafting and filing
 Specification
▪ Written description
▪ Enablement

 Invention
 Chair with wheels
 Prior art
 Chair
 Wheels for toys
 Patentable?

 Invention
 Voice mailbox
 Prior art
 Telephony
 Voice recorders
 Patentable?

 Claim 1: A water bottle cap, said cap comprising:
 a base defining an opening, said base having a
locking mechanism configured to engage said
base with a bottle;
 a water outlet pipe adapted to be received
inside the opening, said pipe attached to said
base; and
 a closure member hingedly engaged to said
base, said closure member adapted to move
between an open position, where the closure
member moves away from said pipe, and a
closed position, where the closure member
moves towards said pipe and abuts said base.
23 November 2015 © 2012 BananaIP Counsels

 PriorArt 2 discloses a water
bottle cap having a base.The
base of the water bottle cap
defines an opening. Further, a
closure member is hingedly
attached to the base.The
closure member moves between
an open position, where the
closure member moves away
from the opening of the base,
and a closed position, where the
closure member moves towards
opening of the base.The
projection of the closure
member, in the closed position,
extends inside the opening and
thus seals the opening.
 PriorArt 1 discloses a water
bottle cap having a base with an
opening. Further, a straw
adapted to be received inside
the opening is disclosed.The
straw extends inside the bottle.
The straw has a closure member
just enough to close an opening
defined in the straw. Further,
the straw has a sealing
mechanism which seals the
opening defined by the base.

Invention Prior art 1 Prior art 2
Base √ √
Water outlet √ X
Closure member X √

 Rights of patentee
 Make
 Use
 Sell
 Offer for sale
 Import
 Negative rights
 Infringement

 Infringement when?
 Exclusive rights violated
 Scope of rights?
 Defined by claims
▪ Claims define the metes
and bounds of the
invention
 Infringement factors
 Territorial
 Term
 Claims

 Direct infringement
 Literal infringement
 Doctrine of equivalence
 Indirect infringement
 Contributory infringement
 Induced infringement

 Claim construction
 Comparison
 Claim by claim - element by element analysis

 Preamble
 Transition phrase
 Body
 Claim
 I claim
A ceiling fan comprising of a base connected to a solid
rod, which in turn is connected to a rotor with three
wings.

 A ceiling fan
comprising
of a base
connected to
a solid rod,
which in turn
is connected
to a
rotor with
three wings.
 Preamble – A ceiling fan
 Transition Phrase – comprising
 Body – base connected to a
solid rod, which in turn is
connected to a rotor with
three wings.

PATENT
 A ceiling fan comprising
of a base connected to a
solid rod, which inturn is
connected to a rotor with
three wings.
 Elements
▪ Base
▪ Solid rod
▪ Rotor
▪ 3Wings
PRODUCT
 A ceiling fan having a base
to be attached to the
ceiling and which has a
hollow rod connected to
the base.The hollow rod is
connected to a circular
rotor having 4 wings.

 “ A gel
composition for
treatment of pain
comprising;
2-10 percent by
weight
Benzocaine and
atleast one of
propylene glycol
and glycerine as a
co-solvent.”
 Preamble – A gel composition
for treatment of pain
 Transition Phrase – comprising
 Body – 2-10 percent by weight
Benzocaine and atleast one of
propylene glycol and glycerine
as a co-solvent.
 Elements
▪ 2-10 percent by weight Benzocaine
▪ Propylene glycol or Glycerine

PATENT
 “ A gel composition for
treatment of pain
comprising;
2-10 % by weight
Benzocaine in atleast in
part as the free base; and
atleast one of propylene
glycol and glycerine as a
solvent. “
 Infringing?
PRODUCT
 “ A gel for treating
neuropathies causing pain
at a site by inducing
analgesia.The gel is
administered
intradermally.The gel has
10 % by weight of
Benzocaine and glycerine
as solvent.“

PATENT
 “What I claim is a gel
composition for treatment
of pain comprising;
2-10 % by weight
Benzocaine; and
propyl paraben.“
 Infringing?
PRODUCT
 “ A gel for treating
neuropathies causing pain
at a site by inducing
analgesia.The gel is
administered
intradermally.The gel has
10% by weight of
Benzocaine and methyl
paraben.“

 Process of treating dry fruits
 Elements
 Sulphuric Acid -Washing Soda
 muriatic acid - Acetic acid
 Sulphur dioxide fumes under pressure - Sulphur
dioxide fumes without pressure

 Black BerryTechnology
 ‘communication’ – does the word also include
wireless communication and not only wired
communication.
 Settled – 612.5 million dollars paid by RIM

 Kodak - Exclusive supplier of negatives for
Polaroid cameras (from 1963 until 1969)
 Polaroid chose to manufacture its own
instant film.
 The Kodak enters instant camera
with models known as the Kodamatic and
the Colorburst.
 Kodak loses patent battle with Polaroid
Corporation
 Damages awarded to Polaroid
 $909,457,567.00 (nearly one billion dollor)

 Multistage process
 Identify key elements of the product
 Identify the country(-ies) of interest
 Patent screening
 Patent analysis
 Report
 Decision
 FTO Exists – Product may be launched
 FTO Doesn't exist – Product launch subject to risks

 Work around
 Collaborate
 License
 Infringe
 Defend
 Challenge

 Obtain patent rights
 Mandatory OR optional?
 Avoid third party patent infringement
 Mandatory OR optional?

 SiNApSE blog
 www.sinapseblog.com
 Online IP courses
 www.onlineipcourses.com
 Radio SiNApSE
 www.radiosinapse.com
 Newsletter
 www.ipconvergence.in

Trademarks: Cargo company wins battle to have Intel in its trade name - BananaIP

Trademarks: Cargo company wins battle to have Intel in its trade name - BananaIP

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