Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patentholder. 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.^{[citation needed]}

The scope of the patented invention or the extent of protection^[1] 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 granted 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 exploit the patented invention in their country. The scope of protection may vary from country to country, because the patent is examined -or in some countries not substantively examined- by the patent office in each country or region and may be subject to different patentability requirements.

Overview[edit]

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.^[2]

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 generally does not infringe the patent with respect to that claim, except if the doctrine of equivalence is considered applicable.

In response to allegations of infringement, an accused infringing party typically asserts one or more of the following:

that it was not practicing the patented invention, i.e. the invention claimed in the patent (the claims define the extent of protection conferred by a patent);
that it was not performing any infringing act in the territory covered by the patent (patents are indeed territorial in nature);
that the patent has expired (since patents have a limited patent term, i.e. a limited lifetime);
that the patent (or the particular claim(s) alleged to be infringed) is invalid, because the invention in question does not meet the patentability requirements or includes a formal defect, this rendering the patent invalid or unenforceable;
that it has obtained a license under the patent.

The parties may also resolve their dispute in a settlement, which may involve a licensing agreement, such as a cross-licensing agreement. Private settlements may not always serve the public interest, "because litigating patent disputes to completion tends to generate positive externalities, by clarifying the limits of patent protection if the patent is upheld or encouraging wider use of the innovation if the patent is invalidated".^[3]

Indirect infringement[edit]

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 a patent and a third party supplies a product which can only be reasonably used to make the claimed device.^[4]

Legislation[edit]

Australia[edit]

In Australia, a patent infringement occurs when a person, who is not the patentee, exploits or authorises another person to exploit the patent in question.^[5]

'Exploit' in this context includes:^[6]

(i) Make, hire, sell or otherwise dispose of a patented product; or
(ii) Offer to make, sell, hire or otherwise dispose of a patented product; or
(iii) Use or import a patented product; or
(iv) Keep it for the purposes of doing (i), (ii) or (iii); or
(v) Use a patented method or process; or
(vi) Do any act mentioned from (i) to (iv) above in respect of a product resulting from the use of a patented method or process.

Canada[edit]

In Canada, patents are governed by the Patent Act, and the rights of a patent holder are summarized at s. 42:

“

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.^[7]

”

By granting the patent holder the exclusive right, privilege and liberty of making, constructing, using, and selling the invention, the 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.^[8]

Canada is considered to be more friendly for rights holders in pursuing patent claims than in the United States, due to significant differences between the two jurisdictions:^[9]

Patents in Canada are subject to a purposive construction, which relies on reading both the claims and the specifications to determine the scope of a patent, and extrinsic evidence is not permitted, leading to the absence of prosecution history estoppel.^[10]
While US patent trials are heard by a jury, Canadian trials are heard by a judge only, and thus the claims of a Canadian patent are construed only once as part of the trial judge's decision on the merits of the case as a whole. In that regard, the Federal Court of Appeal has ruled that Markman hearings are not allowed under Canadian law.^[11]
In Canada, the applicant has no obligation to disclose material prior art, so patents cannot be invalidated on that basis.^[12]
The same absence of obligation also means that the Competition Act will not come into play, unlike what occurs with antitrust law in the US.^[13]
The Canadian discovery process is more streamlined than the US procedure, resulting in less cost and time in pursuing the lawsuit, and it also possesses an implied undertaking rule, barring use of information produced or disclosed in discovery from any purpose other than the present litigation (other than by leave of the court).
Canadian law allows a plaintiff to elect to claim either compensatory damages or an accounting of profits, which can either act as a deterrent on infringement or as an incentive to reach a settlement before trial.
The availability of costs in Canadian courts is a significant advantage to a plaintiff confident of success, but is also a deterrent to pursuing more speculative cases.
Treble damages are not awarded in Canadian courts, and punitive damages are less likely to be awarded.

Europe[edit]

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.^[14] A majority of the member states of the European Union have agreed to set up a unitary patent (formerly called Community patent) system, according to which patents would be centrally enforceable before a Unified Patent Court. However, the corresponding legal texts have not entered into force yet.

Japan[edit]

Infringement under the patent law in Japan is defined by Article 101 of Patent Act (Act No. 121 of 1959),^[15] 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[edit]

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[edit]

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.^[16] 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.^[17]

Clearance search, and clearance, validity and enforceability opinions[edit]

A clearance search, also called freedom-to-operate (FTO) search^[18] or infringement search,^[19]^[20] 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.^[21] 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 $13,000.^[22]

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[edit]

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.

In June 2006, a Study for the European Commission on the feasibility of possible insurance schemes against patent litigation risks was published.^[23] 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"[edit]

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^[24]

“

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?

”

Ironically, the term "pirate" has also been used to describe patent owners that vigorously enforce their patents.^[25] (See also patent troll) 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[edit]

"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."^[26] This however is not the case in the United States

Many businesses believe that receiving a patent offers complete protection against infringement. However, when a patent is threatened, patent holders must take more drastic measures to protect their interests. Patent litigation includes legal actions to protect patents against infringement, and may result in monetary damages or an injunction against the infringement.

Patent Infringement Litigation: The Basics

Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of the patent holder. The patent holder may choose to sue the infringing party to stop his or her activities, as well as to receive compensation for the unauthorized use. Since intellectual property is governed by federal law, the patent holder must sue the unauthorized party in federal district court.

Patent holders must bring infringement actions within six years from the date of infringement; if the suit is not brought in this time limit, it is time-barred, ratifying the infringement. While patent litigation proceeds much like any other federal case, the complicated legal issues surrounding patent validity and infringement are reserved for the court's determination, although some patent litigation cases use juries for other aspects of the overall case.

Defenses to a Patent Infringement Lawsuit

The alleged infringer typically counters the patent holder's suit by alleging that the patent is not valid. Patents are invalid if the holder included fraudulent information in the U.S. Patent and Trademark Office application; if the patent resulted from anticompetitive business activities; or if the alleged infringer can show that the patent did not meet the requirements of novelty and nonobviousness required for patent protection. Novelty requires that the invention be entirely new, while nonobviousness means that the invention cannot be a variation or an obvious improvement of an existing invention.

The patent holder bears the burden of proof to show that the defendant infringed the patent. The plaintiff must prove infringement by a preponderance of the evidence. This standard means that the greater weight of the evidence must show that the patent is infringed.

Different Types of Patent Infringement

There are different ways another party may infringe on your patent, including:

Direct Infringement: This occurs when a product covered by a patent is manufactured without permission.
Indirect Infringement: An indirect infringer may induce infringement by encouraging or aiding another in infringing a patent.
Contributory Infringement: This occurs when a party supplies a direct infringer with a part that has no substantial non-infringing use.
Literal Infringement: This exists if there is a direct correspondence between the words in the patent claims and the infringing device.

Even if an invention does not literally infringe the patent, it may still infringe under the doctrine of equivalents. A device that performs the substantially same task in substantially the same way to achieve substantially the same result infringes the patent under this doctrine. If the court finds infringement, it must still determine whether the infringement was willful.

Willful Infringement

Willful infrigement involves intentional disregard for another's patent rights and encompasses both direct and intentional copying and continued infringement after notice. Patent users and inventors should employ patent attorneys to ensure that the use of a patent is valid and noninfringing. Even if infringement is later found, the attempt to secure a legal opinion is evidence that the infringement was not willful.

If the court finds that the infringement was willful, the infringer faces a substantial financial penalty; a willful infringer may end up paying triple the amount of actual damages suffered by the patent holder, as well as the plaintiff's attorneys' fees.

Patent Infringement: Penalties

When a court finds infringement, the infringer usually must pay damages to the patent holder, either in the form of actual damages or a reasonable royalty for the unauthorized use. Actual damages include lost profits the patent holder would have realized but for the infringement, while a reasonable royalty depends on the type of product, other royalty arrangements, time remaining on the patent, and other issues. In addition to damages, the prevailing party is also entitled to costs. Costs include court filing fees and related litigation expenses.

In addition to infringement damages, a patent owner may stop the infringer from continuing to produce infringing products. The court typically, as a matter of course, issues a permanent injunction after the infringer is held liable for violating the patent.

In some instances, the patent holder will seek a preliminary injunction at the outset of the lawsuit where he or she can show no detriment to the public interest if the injunction is granted, a substantial likelihood of success on the merits of the case, and more compelling hardship for the patent holder if the infringer continues his or her activities while the case proceeds. The patent holder will find it difficult to get a preliminary injunction unless a prior adjudication proved the validity of the patent.

Facing a Patent Infringement Claim? An Attorney Can Help

The combination of federal court jurisdiction, complicated subject matter, and technical underpinnings of patent law mean that patent holders and accused infringers should seek highly skilled legal help. Patent attorneys can assist litigants in developing their cases and in securing aggressive litigation services. Get in touch with an experienced intellectual property attorney today and protect your business.

The unfortunate reality is that, in many categories of invention, it can be very difficult to market a product that does not infringe upon an existing utility or design patent.

If you believe that you are at risk of being hit with an infringement claim, it’s critical that you obtain the services of an experienced patent attorney immediately. We can help. To learn more, contact us by calling (916) 760-8265, or sending us a message using our contact form.

Based upon my experience, there are five popular approaches to avoiding getting hit with a patent infringement claim:

5. Throw caution to the wind and knowingly infringe on the patent, and hope you don’t get caught.

As a patent lawyer, I would never recommend this. However, this is an approach that I see a lot. Quite often, patent holders don’t have the resources to enforce a patent, know that their patent won’t hold up in court, or simply don’t know their work is being infringed upon.

Obviously, this is a gamble that hinges upon whether not having to spend a single dollar on taking a legitimate approach is worth the risk of being hit with a patent suit. Again, I wouldn’t recommend it, but it works quite often.

Bear in mind, the more popular your product, the more worthwhile it becomes for a patent holder to come after you.

4. Take out a patent infringement policy.

A few insurers sell patent infringement insurance. These policies can be used to help pay the court costs of defending a patent against infringers, or to respond to claims of infringement. This approach is actually quite similar to the above approach of simply potentially infringing and hoping for the best, except that you defray the cost of potential infringement by paying someone else to take on some of your risk.

Bear in mind, if you know you are infringing and don’t disclose this when you purchase the policy, your insurer will not cover your court costs.

3. Buy your components from American sources.

If you source your product’s parts from no-name overseas sources, you are responsible for any and all patent infringement, even if the infringement is due entirely to a single component you didn’t manufacture, but simply used to build your product.

However, when you buy a product in the United States from the patent holder or a person having a license from the patent holder—whether it’s a paperclip, a computer processor, or a tractor—you purchase along with it a license to all of the patents covering that product and related processes. This means that you cannot be sued for infringement, due to the doctrine of “patent exhaustion.”

The flip side of this is that if you buy a product from an American seller and it turns out they didn’t obtain the necessary licenses—and thus, place you in a position where you are committing infringement—you can sue them under the Uniform Commercial Code. In practice, reputable merchants quickly remove their customers from patent lawsuits and you will be out of the action as fast as you were thrust into it. Of course, if they’re a cut-rate supplier that disappears into the night the moment the lawyers come calling, you’re out of luck. So, be sure to buy from reputable sellers.

2. Identify the patents in question, and then work around them.

Patents are much like pieces of property, in that they have boundaries. If you can stay outside the bounds of the patent/property, you’re in business. Bear in mind, this is a very delicate process, and misunderstanding even a single critical word or phrase can mean failing to avoid the bounds of the patent and ending up in court.

It’s strongly advised that you work with a patent lawyer to identify all the relevant patents and develop a strategy for safely making it through the minefield. Bear in mind, just because you work with a lawyer doesn’t mean you won’t get sued. Rather, it means that you’ll have a cogent response if they do.

1. Obtain a portfolio of patents and other intellectual property rights.

If you pay attention at all to tech or medical industry news, you likely see a constant barrage of minor news stories about the big tech giants and pharmaceutical manufacturers buying up company after company. Almost always, the purchasers aren’t interested in most their acquisitions’ assets—real estate, factories, customer base, etc. What they really want is the portfolio of intellectual property rights owned by the acquisition.

For many decades, it has been a time-honored tradition for companies to squabble over the carcasses of ailing and deceased companies, fighting to lay hands on the lucrative patent portfolios that come up for grabs. These portfolios can be used to go on the attack against competitors by identifying infringement, or to protect against infringement claims, or even to negotiate ceasefires when two companies infringe against one another.

This is a very advanced approach, but it is one of the strongest. The very best way to prevent someone from successfully suing you for infringement is to pull the rug out from under their feet and show that your product relies on a patent or patents that you have obtained, which actually precede (and thus negate) the other party’s patent(s).

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand. It is no wonder that there are a lot of misconceptions or myths about patents.

This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.

Ideas Are Not Patentable.

Clients often want to patent an idea. Ideas are not patentable – inventions are patentable.

To be patentable, an invention must fall within one of four categories, referred to as statutory subject matter. Those categories are: processes (also referred to as methods), machines, articles of manufacture, and compositions of matter.

Process patents include patents for methods of doing just about anything, including some computer software and some methods of doing business (although business method patents are now under increasing scrutiny both in the PTO and in the courts). Machine or apparatus patents include traditional types of machines as well as computer systems. Articles of manufacture are devices such as tools or just about any non-machine. Compositions of matter include chemical compositions, genes, and genetically engineered (non-natural) living organisms, including bacteria, plants, and animals.

The above four categories are the categories of inventions for which a utility patent can be obtained. There are two additional types of patents: design patents and plant patents.

Design patents protect ornamental designs for articles of manufacture, such as chairs, dishes, and glassware. A design patent protects only the appearance of the article, not any aspect of its functionality. An article may be the subject of both a design patent and a utility patent, however, if it has both ornamental design and function.

Plant patents protect distinct, new varieties of asexually reproducible plants (i.e., plants that can be reproduced without seeds, such as by budding or grafting). They include such plants as certain types of roses, nuts, flowering plants, and fruit trees.

There are several things that are specifically not patentable. They are: abstract ideas and mental processes, laws of nature, natural phenomena, and mathematical algorithms.

Even if a client’s idea fits within one of the four categories of statutory subject matter, it still is not patentable if it is in its infancy. The idea must be an invention. The inventor need not have actually made the invention (reduced it to practice), but must have a complete and operative understanding of the invention. The patent application must contain a detailed written description of the invention and must describe how to make and use the invention without undue experimentation. Thus, an idea that is not fully fleshed out, even if it is patentable subject matter, is not ready to patent. The inventor must be able to describe what the invention actually is.

The Inventor Cannot Withhold Details of the Invention to Prevent the Public from Copying.

In addition to a detailed description of how to make and use the invention, a patent application must also include the “best mode” of carrying out the invention. The best mode is the best way of using the invention known to the inventor at the time the application is filed.

This requirement prevents the inventor from keeping the best way of using the invention a secret. A patent is a trade-off: in exchange for the Government giving the inventor the rights to exclude others from making, using, selling, or offering to sell the invention, the inventor must fully disclose the invention to the public in the patent. This is so that the public may practice the invention after the patent expires.

If an invention is easy to reverse-engineer, trade secret protection is essentially useless and patent protection is the better choice. This is because patents, unlike a trade secret, protect against reverse engineering. On the other hand, if an invention is difficult to reverse-engineer, trade secret protection may be preferable to obtaining a patent because, unlike a patent, a trade secret does not expire.

You Cannot Tell What a Patent Protects by Looking Only at the Text or the Drawings.

A utility patent contains several parts: a specification or disclosure, a drawing if necessary, and at least one claim. The specification is a detailed description of the invention that tells a person of ordinary skill in the art how to make and use the invention and describes the best mode of carrying out the invention. The drawings (which may include flow charts) must illustrate all essential elements of the invention. Drawings are typically necessary for inventions that fall within the subject matter categories of machines, articles of manufacture, and processes; drawings are usually not necessary for compositions of matter.

The specification and drawings describe the different versions (embodiments) of the invention or examples of the invention. They do not define what the patent owner may enforce with the patent. This is determined by the claims.

The claims must contain the patentable elements of the invention. It is the claims that are used to determine whether there is infringement. The claims must be read in light of the specification and the drawings, but the claims define what the patent protects. Sometimes, the claims are broader than what is described in the specification and the drawings, so one must read and interpret the claims to know what the patent protects.

A Provisional Patent Application is Not a Quicker, Cheaper Way of Getting a Patent.

A provisional patent application cannot become a patent. Despite its name, a provisional patent application is not really a patent application at all because it cannot mature into a patent. Rather, a provisional patent application acts as a placeholder for a utility application – it is a mechanism for allowing an inventor to obtain an earlier filing date for a utility application.

A provisional patent application requires a specification and a drawing if necessary, and should contain at least one claim. It must satisfy the same requirements as a utility application (written description, enablement, and best mode). A provisional application is not ever examined by the PTO and no patent ever issues directly from it. An inventor has one year from the filing date of the provisional application in which to file a non-provisional utility patent application for the same invention, claiming the benefit of the filing date of the provisional application. Because a provisional application requires the same level of detail as a utility application, it is typically not much quicker or less costly than a utility application.

If a client has limited time or funds, however, filing a provisional application may be better than filing no patent application. For example, a provisional application may be advantageous if the inventor needs to disclose the invention on short notice and does not have enough time to have a utility application prepared. In that situation, the provisional application may provide the inventor with an earlier filing date than might otherwise be obtained, as long as what is later claimed in the utility application was disclosed in the provisional application.

A Patent Does Not Give the Patent Owner the Right to Practice the Invention.

Inventors and patent owners often assume that a patent gives them rights to practice the patented invention, i.e., freedom from infringement. Not true.

A patent is a grant to its owner of the right to exclude others from making, using, offering to sell, and selling the patented invention in the United States, or importing the invention into the United States. These rights are called exclusionary rights. A patent does not provide its owner with the rights to do these things. An invention may be patentable but still infringe another person’s patent. In such a case, the patent owner may have a patent on the invention but cannot make or use the invention unless they obtain a license from the owner of the patent that is infringed.

Patents Do Not Infringe Other Patents.

A patent cannot infringe another patent. Only a machine, article of manufacture, composition of matter, or process can infringe a patent.

As stated above, a patent gives its owner the right to exclude others from making, using, offering to sell, selling, or importing the patented invention. The patent is infringed if any of these acts are committed in the United States without the patent owner’s permission. Thus, there is no infringement unless someone makes, uses, offers to sell, or sells the invention in the United States, or imports the invention into the United States. An invention described in a patent may infringe another patent, but only if it is made, used, offered for sale, sold, or imported in the United States. The patent itself is not an act of infringement.

Patentability and Patent Infringement are Not the Same Thing.

Inventors often think that if their invention is patentable, then it cannot infringe other patents. Not so. Patentability and patent infringement are two different things. An invention may be both patentable and infringe an existing patent. In both cases, the starting point of the analysis is the claims.

To determine if an invention is patentable, the invention, as it is claimed, is compared to what is known in the field (the prior art). In general, prior art includes written documents (such as other patents, published articles, catalogs, and websites), as well as actions by the inventor and third parties, that exist before the patent application is filed.

The first requirement of patentability is that the claims must be novel (new or different) over the prior art. The test for novelty is performed by looking at each element of the invention as claimed. If all of the elements of the claimed invention are present in a single prior art reference, then the invention is not novel and is said to be anticipated by the prior art. The invention is not patentable.

The second requirement of patentability is that the claims must be nonobvious over the prior art. The invention is obvious if the differences between the invention and the prior art are such that the invention, as a whole, would have been obvious at the time it was made to a person with ordinary skill in the art. Unlike the test for novelty, the test for obviousness is not limited to a single prior art reference – any number of references can be combined to render an invention obvious. For obviousness to be found, every element of the claimed invention must be present or suggested in the prior art, although not necessarily in the same reference.

To determine if an invention infringes an existing, in force (not expired) patent, the claims of the patent in question are compared to the invention (in a patent infringement action, the district court first interprets or construes the claims to determine their meaning and scope). If each element of a claim is present in the invention (literally, or in some cases, by an equivalent), that claim is infringed. Only one claim need be infringed for the patent to be infringed.

Thus, although it sounds counter-intuitive, an invention can be patentable over a prior art patent and, at the same time, infringe the same patent.

Patent infringement is a civil wrong causing commercial harm. Patent infringement consists of the unauthorized making, using, offering for sale or selling any patented invention within the United States or United States Territories, or importing into the United States of any patented invention during the term of the patent. Whoever actively induces infringement of a patent shall also be liable as an infringer. In short it is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission is given by way of licenses. The definition of patent infringement may vary by jurisdiction.

When patent infringement happens, the patentee may sue for relief in the appropriate Federal court. The patentee may ask the court for an injunction to prevent the continuation of the patent infringement and may also ask the court for an award of damages because of the patent infringement.

No infringement action may be started until the patent is issued. However, pre-grant protection is available under 35 USCS § 154 (d), which allows a patent owner to obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance. In order to obtain provisional damages patent holder should show that the infringing activities occurred after the publication of the patent application; that the patented claims are substantially identical to the claims in the published application, and that the infringer had "actual notice" of the published patent application.

Patent infringement generally falls into two categories: literal infringement and infringement under the doctrine of equivalents. The term "literal infringement" means that each and every element recited in a claim has identical correspondence in the allegedly infringing device or process. However, even if there is no literal infringement, a claim may be infringed under the doctrine of equivalents if some other element of the accused device or process performs substantially the same function, in substantially the same way, to achieve substantially the same result. This "expansion" of claim coverage permitted by the doctrine of equivalents, however, is not unbounded. Instead, the scope of coverage which is afforded the patent owner is limited by (i) the doctrine of "prosecution history estoppel" and (ii) the prior art.

An infringement analysis determines whether a claim in a patent literally "reads on" an accused infringer's device or process, or covers the allegedly infringing device under the doctrine of equivalents. The steps in the analysis are:

1. Construe the scope of the "literal" language of the claims.

2. Compare the claims, as properly construed, with the accused device or process, to determine whether there is literal infringement.

3. If there is no literal infringement, construe the scope of the claims under the doctrine of equivalents.

The doctrine of equivalents is an equitable doctrine which effectively expands the scope of the claims beyond their literal language to the true scope of the inventor's contribution to the art. However, there are limits on the scope of equivalents to which the patent owner is entitled.

In order to determine the scope of equivalents to which the patent owner is entitled, the doctrine of prosecution history estoppel must be considered. Prosecution history estoppel limits the scope under the doctrine of equivalents by preventing a patent owner from recapturing during litigation that which was given up during prosecution of the patent to avoid prior art and obtain a patent. This portion of the analysis is performed by obtaining and studying the patent application file.

Also, the scope of equivalents to which the patent owner is entitled is bounded by the prior art. The patent owner cannot expand the claims for purposes of finding infringement if the scope of equivalency sought would ensnare the prior art. Therefore, if infringement under the doctrine of equivalents is found, a prior art search should be performed to determine if the scope of equivalency ensnares the prior art.

B. Liability for Infringement

The definition of "patent infringement" can be found in 35 U.S.C. § 271(a) which defines direct infringement simply as the making, using or selling of a patented invention in the U.S. without authority from the patent owner. In addition, 35 U.S.C. § 271(b) extends liability for infringement to those who "actively induce" another to infringe a patent, and 35 U.S.C. § 271(c) extends liability to contributory infringers as follows:

"whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer".

Any person or entity who is found liable for patent infringement is subject to the imposition of damages and an injunction. The damages to which a patent owner is entitled are the patent owner's lost profits as a result of the infringement, but not less than a reasonable royalty. In addition, if infringement is determined to have been willful, the court may award up to treble the actual damages and attorneys fees.

C. Claim Interpretation.

Generally speaking, terms are given their plain meaning, except to the extent that the inventor has chosen to be his own lexicographer and give a term a special meaning. This can be determined by examining the specification.

However, claim language can be cast in what is called "means plus function" form permitted under 35 U.S.C. §112, sixth paragraph, which provides that,

"An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." (emphasis added).

By its express terms, therefore, Section 112, ¶6 permits an element in a claim to be expressed as a means or step for performing a specified function. However, the scope of such a claim is not limitless, but is confined to structures expressly disclosed in the specification and corresponding equivalents. Therefore, the statutory provision prevents an overly broad claim construction by requiring reference to the specification, and at the same time precludes an overly narrow construction that would restrict coverage solely to those means expressly disclosed in the specification.

In other words, a "literal" construction of such a limitation may encompass only the disclosed structure and its equivalents. Thus, the "plain meaning" of such a claim, without resort to limiting features contained in the specification, the prosecution history, and a factual inquiry into equivalents, might create an erroneously broad scope.

Therefore, arguments made during the prosecution history are relevant in determining the meaning of the terms at issue. The prosecution history of a patent contains:

"... all express representations made by or on behalf of the applicant to the examiner to induce a patent grant... Such representations include amendments to the claims and arguments made to convince the examiner that the claimed invention meets the statutory requirement of novelty, utility, and non-obviousness. Thus, the prosecution history (or file wrapper) limits the interpretation of claims as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance."

In addition, the prosecution history of a parent case, and the construction of a term contained therein, is relevant to an understanding of that term as it is used in a continuation case.

Also, although a patentee may be his own lexicographer, the patent specification must support his asserted definition. Furthermore, terms of a claim must be interpreted with regard to the other claims, the specification, and the prosecution history. It is also important to note that the Federal Circuit has been consistent and uniform in its application of the law in this area, and has evidenced a liberal, pro-patent point of view.

D. Literal Infringement.

As indicated above, infringement of a claim requires that the accused device meet every limitation of the claim, either literally or under the doctrine of equivalents. In the case of literal infringement, if a claimed element is missing, then literal infringement is avoided. In other words, a "literal" construction of such a limitation may encompass only the disclosed structure and its equivalents.

In the case of a claim with a "means plus function" element, the element is met literally when (i) an accused device performs the same function recited in the element, and (ii) the accused device embodies the corresponding structure, material, or acts described by the specification or an equivalent thereof. 35 U.S.C. § 112, ¶6 provides that claim limitations "expressed as means ... for performing a specified function without the recital of structure ... in support thereof, ... shall be construed to cover corresponding structure ... described in the specification and equivalents thereof." In this paragraph (6) Congress sought to provide instruction on the interpretation of "means" claims, which otherwise might be held to be indefinite. Therefore, Paragraph 6 operates to cut back on the type of means which could literally satisfy the claim language. More specifically, where a claim sets forth a means for performing a specific function, without reciting any specific structure for performing that function, the structure disclosed in the specification must be considered, and the patent claim construed to cover both the disclosed structure and equivalents thereof.

E. Infringement Under the Doctrine of Equivalents.

One of the principal concerns with relying on the literal language of the claims in a patent is that, even though you avoid literal infringement, you may still infringe the patent under the "doctrine of equivalents." The "doctrine of equivalents" is a judicially created doctrine having a three part "function/way/result" substantial identity test embodying the following steps:

1. Determine whether the accused device or process achieves substantially the same result as the claimed invention. If it does not, the infringement inquiry ends.

2. Determine whether the accused device or process performs substantially the same function as the claimed invention. If it does not, the infringement inquiry ends.

3. Determine whether the accused device or process operates in substantially the same way as the claimed invention. If it does not, the infringement inquiry ends.

In applying this test, each element of the claim must also be compared with the accused device or process to determine whether the accused device or process contains each element or its substantial equivalent.

A substantial equivalent of an element is one that causes the accused device or process to operate in substantially the same way as the claimed invention, considering the nature, purpose and quality of the element and its corresponding structure in the accused device or process.

Another way of looking at this test is to determine if the differences between the claimed invention and the accused device are so insubstantial that a fraud on the patent would result. This occurs when, for example, changes are made solely to avoid the literal language of the claim, and the changes reflect little or no advantage.

In short, in order to find infringement under the doctrine of equivalents, an element-by-element comparison and not a "claim as a whole analysis", must be made between the claimed invention and the accused device. In determining if a "substantial equivalent" exists for a claimed element or limitation, the three-prong test can be used. However, even if a "substantial equivalent" can be found, there still can be no infringement if the asserted scope of equivalency would encompass the prior art or be barred by the prosecution history of the patent.

Note that the doctrine of equivalents presents a less demanding standard than that for literal infringement. For literal infringement there must be identity of elements; for the doctrine of equivalents to apply, there is only a "substantial" identity requirement. In applying the test, however, two principles are clear -- first, a claim cannot be broadened so far as to read on the prior art, and second, a patentee cannot recapture what was given up during prosecution of the patent. In other words, the "expansion" of claim coverage permitted by the doctrine of equivalents is not unbounded. Instead, the scope of coverage which is afforded the patent owner is limited by (i) prosecution history estoppel and (ii) the prior art.

(1) Prosecution History Estoppel.

As indicated above, the essence of prosecution history estoppel is that a patentee should not be able to obtain, through the doctrine of equivalents, coverage of subject matter that was relinquished during prosecution to procure issuance of the patent. Further, the legal standard for determining what subject matter was relinquished is an objective one, measured from the vantage point of what a competitor was reasonably entitled to conclude from the prosecution history, that the applicant gave up to procure issuance of the patent. Additionally, a patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the USPTO by literal claims.

(2) Effect of Prior Art.

A second limitation of the application of the doctrine of equivalents is the scope and content of the prior art. It is well established that the range of equivalents permitted under the doctrine of equivalents must not ensnare the prior art. The fundamental purpose of all such evaluations must be to prevent the patentee from obtaining, under the doctrine of equivalents, coverage which the patentee could not have obtained from the Patent and Trademark Office by literal claims.

Types of Patent Infringement: Everything You Need to Know

Patent Law Resources Patent Infringement

The various types of patent infringement occur when a person or business uses parts of a patented idea, method, or device without permission. 13 min read

What Are the Types of Patent Infringement?

The various types of patent infringement occur when a person or business uses parts of a patented idea, method, or device without permission. Patent infringement is also known as patent violation or even stolen ideas. It could involve either using or selling the patented invention or idea. Before you can sue someone for patent infringement, you must figure out who is at fault. It's not always as obvious as you might think. Understanding the different types of patent infringement helps to determine who is accountable.

Direct Infringement

Making, using, selling, trying to sell, or importing something without obtaining a license from the patent holder is considered direct patent infringement. The offender must complete this act willfully and within the United States.

Indirect Infringement

Indirect infringement includes contributory infringement and inducement to infringe a patent. Under these terms, even if a company isn't the one that originally infringed on the patent, that company can still be held accountable for patent infringement.

Contributory Infringement

This type of infringement involves the purchase or importation of a part that aids in creating a patented item. To prove contributory infringement, one must show that the component's main use would be to create a patented item. A generic item that has other uses usually doesn't qualify in proving contributory infringement.

Induced Infringement

This occurs when a person or company aids in patent infringement by providing components or helping to make a patented product. It occurs through offering instructions, preparing instructions, or licensing plans or processes.

Willful Infringement

Willful infringement exists when a person demonstrates complete disregard for someone else's patent. Willful infringement is especially damaging to defendants in a civil suit. The penalties are much higher, and typically defendants must pay all attorney and court costs if they are found guilty.

Literal Infringement

To prove literal infringement, there must be a direct correspondence between the infringing device or process and the patented device or process.

Doctrine of Equivalents

Even if the device or method doesn't exactly infringe a patent, a judge might find in favor of the patent holder. If the device does basically the same thing and produces the same results, it could be an infringement.

There are five ways to justify a case of patent infringement:

Doctrine of Equivalents
Doctrine of Complete Coverage
Doctrine of Compromise
Doctrine of Estoppel
Doctrine of Superfluity

Sometimes the end user is not even aware that he or she is using a patented item unlawfully. Other times, there are too many people using the item to sue all of them. Rather than suing end users, it might be best to sue those who are knowingly trying to infringe on a patent.

Types of Patents

A person files a patent application after he or she has created an idea or invention. This prevents others from profiting from it. After one files for a patent in the United States, the United States Patent and Trademark Office (USPTO) decides whether to approve it. This can be a long process, taking up to five years. Following are the types of patents available:

Utility Patent

Most common type of patent
Related to technology such as mechanics, chemistry, and software
May include drawings, charts, and software
A very detailed description of the patent is always necessary

Design Patent

Only exists in the United States. In other countries, designs aren't patented.
Function doesn't matter for design patents
Typically, only a drawing of the design is necessary when filing a design patent application

Plant Patent

Only relevant for patents that involve plants such as flowers
A florist may patent a type of hybrid flower

In the United States, patents protect companies from losing billions of dollars to competitors. For example, a patent protected the creators of the drug Lipitor, which resulted in 12.7 billion dollars in sales.

Patents exist all over the world, but the laws vary by country. For example, in India, a patent gives the owner power over everything about that idea or object.

Enforcing a Patent

The patent office issues patents, but it does not enforce them. That job is left up to you. The first step is typically to ask the infringing person or company to stop. If that doesn't work, the next steps depend on the country. In Canada, for example, most patent cases take place in the Superior Court of the Provinces or in the Federal Court.

Some important aspects of enforcing a patent include the following:

Patent cases are civil, not criminal, and are heard at the federal level
Damages are typically monetary and include an injunction to prevent further use of the patented idea or item
The scope of the patent clearly outlines the rights of the person who owns the patent

It's important for you and your company to watch your competitors to make sure no one is infringing on any of your patents. Some people choose to hire a third party to do this.

It's also important to watch upcoming technology. You can save time and money by stopping any patent infringement attempts before they are completed.

If you believe someone is infringing your patent, proving it is a two-step process.

Evidence must show that the infringer copied all or part of the patent
Evidence must show any valid parts of the patent where infringement exists

The defense typically will challenge the patent's validity. The capabilities, rules, and regulations vary by country.

The defense may try to prove that the original patent was not valid based on a previous idea or patent. It could be considered invalid because of a failure to include every inventor in the patent.

Several strategies are necessary and important to win a patent infringement lawsuit.

Defining Patent Infringement: Method versus Apparatus

Patent infringement means unauthorized use of a patent. "Use" may sound like a simple term. Unless you are specifically trained in patent infringement, it's not easy to define.

According to 35 U.S.C. 271(a) (2000), "[Whoever] without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes on the patent."

In the past, courts have defined the term "use" liberally. This has made patent infringement difficult to prove.

The nature of the claim determines how the courts handle a case. It's much different for a process or method versus an apparatus.

To consider a process as patent infringement, it must actually be performed
An apparatus claim involves the physical item and not necessarily what it can do. Owning or possessing the object is not always patent infringement.
The sale of an object or apparatus that can do a patented method does not qualify as infringement
There are fewer limitations when claiming patent infringement on methods than on apparatus claims.

Federal Court Opinions: Method versus Apparatus

Infringement on a method has a smaller scope than infringement on an apparatus.

Joy Technologies, Inc. versus Flakt, Inc.

The federal government disagreed that the sale of an industrial plant that the defendant created to use a patented system was patent infringement. If the process was later performed, it could be patent infringement. The sale of the equipment was not considered infringement until the equipment was actually used.

NTP, Inc. versus Research in Motion, Ltd.

The Federal Circuit made it clear that the infringer must sequence the steps exactly for patent infringement to exist. In this case, if the infringer did even one step of the process outside of the United States, the court did not consider the method patent infringement. When the system isn't used in its entirety, it's not infringing on the patent. However, the court did find infringement when the infringers used the system completely within the United States.

Centillion Data Systems, LLC versus Qwest Communications International

The courts decided that infringement only occurs when the system is used and the invention put into service. The infringing party must apply the system or method to cause the end product to benefit the user.

Differences for Apparatus Claims

Even if the device can do things besides its intended use, it is still patent infringement
Direct infringement occurs when someone tricks the owner into selling a machine or apparatus
The courts vary in their decisions when an apparatus claim falls into the method category or vice versa

Patent Infringement Litigation

Litigation may aim to stop the use or activities of a patented idea or item
Patents are typically considered intellectual property and tried at the federal level
An infringement case has to be brought to court within six years of the alleged infringement
Typically, the case is overseen by a judge, as opposed to determined by a jury
The patent holder bears the burden of proof, which means the evidence must favor the patent holder

Judging Patent Infringement

Judging patent infringement is a two-step process.

All relevant patent documents are analyzed in terms of the infringement claims
These claims must be tested to see whether they actually describe the alleged infringement

Penalties for Patent Infringement

When someone is found guilty of patent infringement, the penalties typically include monetary relief to the patent holder. The most important of these is compensatory damages. These cover the patent owner's lost profits because of the patent infringement. The amount of these damages is set after the value of the patent has been determined. Damages may also include the actual money received by the infringer.

The patent holder is also eligible to receive court costs and attorney fees that were paid to take the infringer to court.

If a defendant is found guilty of deliberate infringement, the patent holder is eligible for increased damages. These damages can be up to three times the normal compensatory damages. These damages can only be claimed from the date the patent is issued, and the claim can only go back six years prior to the filing of the infringement claim.

Injunctions are another type of penalty for patent infringement.

Preliminary Injunction versus Permanent Injunction

A judge may grant a preliminary injunction at the beginning of the case if the judge believes the patent infringement will cause hardship to the patent holder
If patent infringement exists, then the judge may grant a permanent injunction for the patent infringer to stop activities

Patent Infringement in India

For infringement disputes in India, the court levels start with the District Court, then move up to the High Court, and finally the Supreme Court of India. These disputes are handled similarly to those in the United States. After the filing of a suit, a hearing is held where the district court reviews the evidence.

If the case deals with both invalidity and infringement, it is heard by the high courts. Furthermore, a specialized board, the Intellectual Property Appellate Board, hears all the appeals related to patent infringement.

In India, the process goes as follows:

Everyone involved is properly notified
Before the trial begins all the evidence is presented by both parties
After the decision, both parties can appeal to the IPAB

How to Avoid Patent Infringement

Spending money to avoid patent infringement could save you or your company a lot of money in the future. There are many reasons to avoid a patent infringement lawsuit.

Cost

Lawsuits are expensive, but patent lawsuits tend to cost even more than traditional ones. Many cost over a million dollars in legal fees alone. If you are the defendant and lose, you may be required to pay court costs and the legal fees of the person who accused you of patent infringement.

Time Consuming

If you are sued for patent infringement, you pay with both your time and your money. Even though the lawyers do most of the work, you will still spend a lot of time appearing in court and working with the lawyers to attempt to prove your innocence.

Injunctions

The accuser may ask for a preliminary injunction that could hurt your business even before the judge gives the verdict. Specifically in India, to get an injunction, the accuser must prove that the claim has validity, there is irreparable damage involved, and that the accuser will be greatly inconvenienced if it is not granted.

Customer Concerns

The owner of the patent may also go after your customers. Even if you have not knowingly committed patent infringement, you could lose customers and damage your reputation during the process.

Recreating Your Product

If you are found guilty of patent infringement, you typically will have to start completely over in your process for your product or idea. You will lose valuable time and money. Finding alternatives from the beginning could be much cheaper.

Avoiding Patent Infringement: Start Early

Don't wait until you've already created a product to try to find relevant patents. You may want to consider outsourcing this step to experts who know how to find relevant patents for specific designs or ideas.

Perform an online patent search by going to the United States Patent and Trademark Office or using PatentHunter
Make sure to remain diligent about reviewing the competition to decide if any parts are similar or patented
Check the packaging of competitors' products or the product itself for patent numbers to see what parts are covered by the patent
Review all patent numbers by doing a patent number search
As a last resort, contact the competitor or have a third party do so

Avoiding Patent Infringement: You Can't Play Dumb

Intentionally ignoring others' patent information won't save you in court. In fact, it will probably cause you more problems.

Avoid Patent Infringement: Perform an Initial Screening

Once you have found all the relevant patents related to your product, it's time to send them to a lawyer for review. Since this process can be costly, make sure you do an initial review to pull out any patents that have expired. Also, find out if the patent owner has paid all maintenance fees, or if any of the patents aren't actually applicable to your product.

A utility patent normally expires after 20 years. A design patent usually expires after 14 years. There are typically maintenance fees associated with patents, and if they aren't paid, the patent is no longer valid. Don't waste your money by having your lawyer review patents that have expired.

Before you send any patents to your lawyer, you should realize that internal communications about patents are not always covered under attorney-client privilege. Be cautious about what you say during these communications.

The Next Steps With Your Attorney

If there is any question that you could be infringing on a patent, it's best to work with your patent attorney immediately. Request a preliminary patent infringement review. This is not a formal opinion, and it costs less than a full review.

If it is necessary, the next step is a formal patent infringement check by your patent attorney. Your attorney will check the USPTO and look for any validity concerns with the patent. Although a formal review is more expensive, it's much cheaper than being sued for patent infringement.

If patent infringement is possible, then it might be worth the time to prove any further validity issues. These might include earlier technology or other patents which would discredit the patent.

Patent invalidity occurs when you can prove that the patent should not have been issued, therefore deeming it invalid
Inequitable conduct might prove a patent invalid if there was deception involved in the original patent
Patent misuse can invalidate a patent if the patent owner uses it to violate antitrust laws

Common Myths Business Owners Believe About Patent Infringement

Myth: We won't get sued.

Some company owners believe that they can get away with using a patent because their company is small and it will go unnoticed
If the patent is owned by a small company, businesses wrongly believe that person or company won't have the means to sue an infringer

Reality: It's not worth the risk.

Patent lawyers are marketing and doing the homework for businesses, making lawsuits more accessible. Even small companies are at risk of being sued.
There's always a chance a small company could be bought by a larger company, and that company will have the resources to find applicable patent infringement
Patent lawyers often take cases on contingency, which means there are little or no upfront costs for small businesses

Myth: We know every patent in the industry.

When people feel that they are experts in their field, they assume that if there is a related patent, they already know about it.

Reality: It's impossible to know every patent.

With new technology created every day, a new patent could be filed without knowledge of others in the industry
A patent may exist for a product that isn't commercialized and therefore unknown to competitors

Permissible Infringement

There are some times when infringement is permissible or at least excusable. If the patent holder intentionally delays bringing a suit against the infringer, the infringer could win the case. There are four other times when infringement is permissible.

The owner authorizes the sale of a patented article, allowing a person to sell it to someone else
An implied license is given when there is also an authorized sale
A person can repair or replace any part of an item that breaks as long as that specific part is not patented
A person can infringe a patent if the purpose is to experiment with the product

Patent Infringement Insurance

If you get sued for patent infringement, it could cost you a great deal of money. you could see big costs. If someone copies or steals parts of your patents, those court costs can also be high.

If you could be at risk for being on the offense or defense of patent infringement, then you may need to consider patent infringement insurance.

You have the choice of two types of policies:

Defensive policies if you are being sued for patent infringement
Offensive policies that cover part or all of your court and attorney costs if you need to sue someone for patent infringement

Most of the time, patent infringement insurance is not worth the investment. There are high costs associated with the insurance, including insurance premiums and copays. The money you spend on insurance is usually better spent on developing technology or investing in your company.

For example, patent insurance usually costs between 2 and 5 percent of the amount of coverage. If you want a million dollars in coverage, it could cost up to 50,000 dollars. You might also have to pay a copayment of 15 to 25 percent of any lawsuit award covered by the insurance. That means if the suit costs one million dollars, you will still owe up to 250,000 dollars.

Defensive patent insurance requires a strict process for approval. The insurer will look closely at your patent portfolio for conflicting patents. If there is any chance you could be sued for patent infringement, they won't cover you. These disadvantages are also true for offensive patent insurance.

Some Comprehensive General Liability Insurance may offer types of insurance that cover aspects of patent infringement, such as intellectual property infringement.

Patent infringement is a complicated part of the legal system. It's important to work with an attorney, whether you are on the defensive or the offensive end of patent infringement. You can post your legal need here, whether it is a patent infringement or another business legal need, and you will instantly receive free custom quotes from the top 5% of lawyers on UpCounsel. Our lawyers come from some of the most prestigious law schools such as Berkley, Yale and Harvard.

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Patent Infringement

Patent infringement

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