PATENT INFRINGEMENT ANALYSIS

(Punyatoya Patnaik, Research Associate working in the Aurobindo Pharma Limited)

An intellectual property right provides a person who performs human intellectual creative activities with the right to exclusively use such creation in a variety of areas. Goods, which are made by using the result of human intellectual creative activities without prior consent from the right holder and which ignore such rights, are called counterfeits and pirated goods. Infringement means the creation of counterfeits and pirated goods and the usage of such creation without prior consent. For such infringement, the right holder may seek the prohibition of usage and claim for damages. The infringement may happen in case of patent, trademark, and or copyright.

Patent infringement may be defined as unauthorized making, using, offering for sell, selling or importing any patented invention during term of the invention according to 35 U.S.C 271. Infringement is determined primarily by the language of the CLAIMS.

Patent claims may be represented as a number of expressions followed by a patent description in a technical manner. The claim plays an important role in both during prosecution and litigation. Claim may be of following types

Independent claim, which stand as its own.

Dependent claim defined as single claim or on several claims and generally express particular embodiments as fallback positions.

According to the terms what they claim it may be a product, process, use and or method of treatment. Some special type of claims like Jepson, Markush, Means- plus-function, Omnibus, Product-by-process, Swiss type claim exist according to various scientist representing various technical ground.

By considering the claim constructed in a patent the study for infringement is carried out, which may be of mainly two types

Literal infringement and

Doctrines of equivalent

Literal infringement

Literal infringement exists when each claim limitation is met literally by the accused product. It basically requires two-part inquiry for any type of patent i.e.

The interpetation of the meaning of the claim i.e. the scope/extent of the claim and or

Whether any other patent has infringed the claimed invention

To examine the literal infringement one must go through the claims, specification, prosecution history and prior or search art.

Doctrines of equivalent

The doctrine of equivalents is an alternative theory of infringement available to a patentee. The doctrine may expand a patent claim beyond its literal scope of coverage to encompass an accused product that does not literally infringe. To examine patent infringement through doctrine of equivalent, one must examine whether the infringed device performed substantially same function or work in same way or to obtain the same result.

The doctrine is based on the idea that an infringer should not be permitted to escape liability by merely changing insubstantial details of an invention while retaining the essential identity of the invention.

The doctrine of equivalent is analyzed in two basic rules, i.e.

The Tripartite Identity Test

A patentee may invoke [the doctrine of equivalents] to proceed against the producer of a device ‘if it performs substantially the same function in substantially the same way to obtain the same result.

The All-Element Rule

The doctrine of equivalents must be applied to individual elements of a patent claim, not to the invention as a whole.

Further according to the act constituting the patent infringement it again divided into 3 types,

Direct infringement

Active inducement and

Contributory infringement

Direct infringement

The typical case of infringement directly commited by an individual. The individual who actually does the making, using, selling, offering for sell or importing is a direct infringer.

Active inducement

This type of infringement comprises to all whoever actively induces the infringement in a patent is liable for a patent infringement. Acts by encouraging another person to infringe i.e. by hiring someone to commit acts that constitute infringement or by supplying instructions teaching how to infringe.

Contributory infringement

Contributory infringement occurs when any person or company sells, offer to sell or import a component of patented article, a components that contributes the material part of the invention or by knowing that the part is for use with the patented invention.

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