Patent Infringement: Everything You Need to KnowPatent Law ResourcesStartup Law ResourcesIntellectual PropertyPatent InfringementHow to Patent an IdeaProvisional PatentPatent PendingDesign PatentPlant PatentUtility Patent
Patent infringement occurs when someone makes, uses, sells, offers to sell, or imports into the U.S. a patented invention without the patent owner's permission.12 min read
2. Stages of Patents
3. Explaining Patent Claims
4. Analyzing Patent Infringement
5. Claim Construction
6. How to Interpret Claims
7. What Constitutes Patent Infringement?
8. Researching a Patent
9. What Are the Types of Patent Infringement?
10. Doctrine of Equivalents
11. Understanding Patent Infringement Litigation
12. Patent Infringement Defenses
13. Length of Patent Protection
14. Avoiding Patent Infringement
15. Lawsuits and Your Business
16. Patent Screening
17. Infringement Review
18. Penalties for Patent Infringement
19. Exceptions and Special Cases
What Is Patent Infringement?
When someone sells, imports, uses, or makes a product that someone else invented without permission, patent infringement has occurred. Patent infringement is easy to do, as all patent information is public and accessible by anyone.
While it may be simple, the act is illegal. In the event a patent holder decides to sue, the court will often step in and stop the illegal activity from continuing and sometimes punish the infringer with penalties such as monetary awards to the patent holder. Since patented ideas often come with many sections or parts, it is possible to have several claims for infringement of one patent.
Stages of Patents
All patents start with an inventor coming up with an idea or design for something new and innovative. During this pre-patent stage, even though the inventor has come up with the idea, they do not own anything and are therefore not entitled to rights from it.
- The first official step in the process is documenting the concept using a provisional patent application.
- After you have filed your provisional patent application, your invention will be considered patent-pending. At this stage, you would have some rights to sue if someone else uses the idea. Patenting your invention can be considered a lengthy process.
- Once you have filed the provisional patent, it will be valid for one year before you will need to file a non-provisional patent to prolong protection. At this stage, a company will typically publicly announce their patent-pending status to keep their competitors informed. It can take several months for the provisional patent to be final, and the USPTO can choose not to release the patent if the inventor requests a delay.
- Once the USPTO issues the patent, it becomes enforceable under the law.
- You will be required to renew the patent. Failure to renew will result in a patent expiration and the ability for others to be able to file a patent for the invention.
It is important to note that just because you own a patent does not mean that it will automatically be enforced. Patent infringement is a civil claim, and while the USPTO will legally grant the patent, it is ultimately the patent holder's responsibility to bring the matter to suit.
Explaining Patent Claims
To be able to make a patent infringement claim, you will need to be able to prove that the invention was used without your permission. To begin your claim, you will want to start by using your patent file as your primary resource.
When you file a patent claim, you are making the claim that someone has infringed on your patent. You will need to start by providing proof that your patented idea or product has been used. It is important to note that the new idea can be better or slightly different from the original idea and still constitute an infringement.
When filing a patent infringement claim, there is a difference between methods and processes. If the person being accused of infringing on a method had used the method for at least a year before the filing of the original patent, then they may not be found guilty of infringement.
Analyzing Patent Infringement
You will need to understand many key terms when discussing patent infringement. Some terms you will need to know include the following:
- An infringer is a person said to be responsible for infringing on someone's new patent.
- Someone who aids in the creation or sale of a patented invention is called a contributory infringer.
- The term "multiple infringers" is used when there are cases of more than one party being accused of infringing on the same patent.
Another important part of analyzing a claim is understanding the court procedures for building a claim. The first things a court will do is determine if the claim can be considered relevant. After the terms of the claim have been laid out, the court will decide whether the claims made are relevant to the patented item.
When filing a claim:
- The patent holder should make sure that the meaning of their words is clear and easy to understand.
- The specifications of the patent should be able to support the claim, not make the claim change.
- Each claim should be different from the previous claims.
- If there can be multiple ways to interpret the specifications, you should use the one that makes the claim valid.
How to Interpret Claims
Phillips v. AWH Corp., 415 F.3d 1303 (Federal Circuit 2005) offers the approach of interpreting claims.
- Begin with a claim. The writing should be easy to understand even if the patent or invention is technical. The claim should give guidance in understanding the meaning of the claim.
- Consider the entire patent. It should be considered in its entirety even if parts are not relevant. The specification is the most important guide to the dispute. If the specification offers disclaimers or inaccuracies, it could mean the patent is invalid.
- Make sure that someone with limited knowledge can understand the claim terms
- Check the legal history of the patent, which presents information on earlier perceptions of the patent
- Look at the evidence submitted by testimonies of the creator and expert witnesses from earlier legal cases
Make sure you realize that the inventor's concept of his patent does not mean that the inventor understands the claims. The inventor's intention is not always relevant to claim construction.
What Constitutes Patent Infringement?
Before you determine if patent infringement has occurred, it is essential to find the part of the patent that the inventor has ownership of. A patent will contain a numbered list of each of the claims of the patent as well as what claims each inventor owns. For a patent infringement case to be successful, all claims listed in the patent must be verified and proven.
Aside from the claims present in the patent, there will also be a section where the inventor is teaching how the invention can be used by the public. This section helps to explain what each of the claims meant. This will help provide an illustration of what the inventor has actually invented. Both of these sections will be used for the analysis to determine all types of patent infringement, including cases regarding the following types of patents:
Researching a Patent
To ensure that your invention does not constitute patent infringement, you must first locate and analyze any similar patents. You can find most published patents with a quick internet search. After finding the patent, you should start with the claims to understand what purpose the inventor owns the patent for. This will help eliminate confusion when reading the use section.
In this section, you will be looking at each specific claim to see if your process or equipment used is different. Next, you will want to look at the instructions to see if the way the invention works is the same way as yours. Remember that if your process, machine parts, etc., differ, your invention will not be considered infringing.
What Are the Types of Patent Infringement?
- Direct infringement. Someone creates the product without the patent holder's permission. The infringer doesn't have to know that the patent exists in order for the patent owner to sue him or her for direct infringement. That person can't make, use, offer, sell, or import a patented invention whether or not he or she knows a patent exists.
- Indirect infringement. The infringer did not directly infringe on the patent but may have encouraged or helped to infringe on the patent.
- Induced infringement. This refers to inducing or persuading someone to make a patented invention. This term is often used in the same way as indirect infringement.
- Contributory infringement. Someone provides a part or a product to help someone else infringe a patent. That part or product must not have any other reasonable use.
- Literal infringement. To prove literal infringement in court, all elements of a defendant's device or idea must be present in the patented one.
- Willful infringement. Willful infringement means that another person or company purposely used someone else's patented ideas or products. A simple way to disprove willful infringement is to hire a patent attorney, who presumably will inform his or her client if infringement is about to occur. It's common for a court to award treble damages in cases of willful infringement, which can serve to prevent it due to their size.
Doctrine of Equivalents
The Doctrine of Equivalents refers to something that is created in such a way that it does the same thing, in the same way, producing the same result as the patented item. It is relevant even when the new product is better or different from the original.
Festo Corp. v. Shoketsu Kinsoky Kabushiki Co., 535 U.S. 722 (2002) is a court case that changed the way courts view the Doctrine of Equivalents. This doctrine is only relevant if the patent holder can prove that amending his or her patent claims doesn't give up the equivalents. This case changed the standard in a way that is confusing even for experienced patent lawyers.
KSY v. Teleflex, 550 U.S. (2007) changed the rules when it found that typical innovations can't be patented.
Understanding Patent Infringement Litigation
The patent owner is responsible for proving patent infringement. It's similar to the concept that a criminal suspect is innocent until proven guilty. The alleged infringer doesn't need to prove he or she is innocent. Expert witnesses are often used to help prove guilt. Often patent litigation can be considered scary due to its cost and uncertain outcome.
Unfortunately, many businesses are under the false impression that when they receive their approved patent, they have earned complete protection against infringement. This is not always the case, and when threatened, patent holders are likely to go to court to protect their interests.
Litigation must occur in federal court because patents are intellectual property. The patent holder must sue within six years from when the alleged infringement occurs. Most of the time, a judge decides the outcome of the case instead of a jury.
- Question of Law means that the judge has the final say in the case, not a jury.
- Question of Fact means that the charges may be decided by either a judge or a jury.
Patents are intellectual property. That means that in the United States, they are not a criminal matter. There is no police protection against patent infringement. You must sue someone in civil court for that person to be held accountable. Since patent litigation is a civil matter, the result of court cases will often result in rulings of monetary damages or injunctions to stop the patent's use by the other party.
Patent infringement cases result from a party's use or sale of a patented item without the permission of the person who holds the original patent. Some patent holders sue to stop the use or sale of their property, while others seek damages for the unauthorized use that occurred.
For a patent infringement case to be heard, the patent holder must file within the statute of limitations, which is six years from the date the infringement occurred. If filed after that, the suit can be considered time-barred.
When anyone else profits off of your intellectual property, your rights have been violated. Unfortunately, patent litigation can cost upwards of a million dollars, making it cost-prohibitive for many inventors to enforce the recognition of their intellectual property rights. Most infringers know this and therefore have little concern for the consequences.
Patent Infringement Defenses
The most common defense to patent infringement is that the patent is not valid. A patent could be invalid for a variety of reasons:
- The patent holder was dishonest on the application
- The patent holder included wrong or misleading information on the patent
- A person used the patented item or idea for illegal activity
- The patent violates antitrust and other competition laws
- It did not meet novelty and non-obvious requirements
To meet the novelty requirement, the product or idea has to be brand new. The non-obvious requirement means that the invention isn't just a modified version of a previous design. Another common defense of patent infringement is an argument that the infringement that is alleged is not covered under the original patent claims.
In any case of patent infringement, the person who holds the patent will be required to provide the evidence and proof that the defendant has in fact infringed on the patent. The legal standard held in a patent infringement case is that it must be proven by a preponderance of the evidence. More simply, this means that there must be greater weight to the evidence that shows the infringement occurred.
Length of Patent Protection
Patent infringement only exists before the patent expires.
- A utility patent expires after 20 years from the date filed or 17 years from its issue date. These numbers are only for patents filed before June 8, 1995.
- After June 8, 1995, the patent lasts for 20 years from the filing date.
- Design patents expire 14 years after they are issued.
- Plant patents last 17 years after they are issued.
Patents also expire if the patent holder does not pay maintenance fees. A patent holder might opt out of paying fees if the invention doesn't work. In that case, they probably don't care about the patent enough to spend the money.
When a patent expires, anyone can use the idea or make the product. The law considers it public domain. If someone improves on the original patent idea, it could be patented again.
Avoiding Patent Infringement
If you are a business owner or inventor, you need to budget to avoid patent infringement. It's an up-front investment to save you a lot of money in the future. Patent infringement lawsuits are costly and time-consuming.
Don't think you can't get sued. Patent infringement is a growing field, and many lawyers are willing to take cases on contingency. They don't get paid unless they win the lawsuit. Even if you own a small company, someone could still sue you for patent infringement.
You are still at risk even if a small business owns the patent. Even if that company can't afford to hire an attorney, it could eventually be bought out by a bigger company which can afford to bring a lawsuit.
Don't assume you know every patent. Even experts in their fields can't possibly know every new technology or patents for products that aren't on the market. Just because you know a lot about your area doesn't mean you can't unintentionally infringe on someone else's patent.
Lawsuits and Your Business
Note that you can't play dumb to get out of a lawsuit. In fact, ignoring or pretending a patent doesn't exist sometimes makes you seem more guilty in court.
Lawsuits are problematic for several reasons:
- Lawsuits are expensive. If you infringe on a patent, you are usually liable for your attorney fees, the patent owner's attorney fees, court costs, damages, and royalties.
- Your time is precious. Your lawyers will do most of the work, but you still have to meet with your lawyers and appear in court. This can be very time-consuming.
- A judge might grant a preliminary injunction. This injunction makes you stop making or using the product, and could hurt your business.
- A lawsuit could damage your company's reputation. Your customers could even be sued in some cases.
- If you're found guilty, you will have to start over. You will have lost all the time you spent creating the original product.
Be proactive and diligent about patents. Start by searching online for patents using programs like Patent Hunter. Always check your competitors for new technology. Check the packaging of relevant products for any patent numbers. If necessary, simply ask a competitor if they have an existing patent.
It's expensive to enlist the help of an attorney, but you can curb some of those costs. Thoroughly review any existing patents that could be relevant to your product or idea. Perform your own initial review to remove any patents that may have expired or are invalid.
Note that written communications are not always considered attorney-client privilege. If you have concerns about a particular patent, don't put it in writing, because it might later be used as proof that you had the knowledge you were infringing on a patent.
- An attorney will offer a preliminary review. This review costs less but does not give an official opinion.
- If the attorney believes there is a patent infringement concern, then the next step is a formal check. The attorney will check the USPTO file history and look for inaccuracies or reasons the patent might be invalid.
- Finally, the attorney will do a Patent Invalidity Review, hoping to prove the patent is invalid.
Penalties for Patent Infringement
If the court finds that the patent infringer is causing damage before or during the case, it could grant a preliminary injunction, which prevents the infringer from continuing his or her actions. To have a preliminary injunction granted, the person requesting the injunction must show the following:
- Public interest will not be negatively affected if the injunction is granted.
- There is high merit to the case, which is likely to result in success.
- There can be additional hardship to the patent holder if the party infringing is allowed to continue use during the litigation proceedings.
Preliminary injunctions can be difficult and are not often granted unless there was adjudication previously that showed validation of the patent.
Other potential penalties include the following:
- Permanent injunction. A court could decide to grant a permanent injunction, or post-trial injunction, if the infringer is found guilty. A permanent injunction makes the guilty party stop his or her actions completely. The court almost always grants a permanent injunction if the infringer is found guilty.
- Damages. The court will usually require the infringer to pay damages when he or she is found guilty. These costs might include actual damages, reasonable royalties, or both. The actual damages are the profits that the patent holder lost to the infringer. Royalties depend more on the specifics of the products and the length of the patent.
- Costs. It's common in patent infringement cases for the infringer to pay costs. These costs include court fees, filing fees, and even the lawyer fees for the patent holder. These costs are usually significant. For example, in 2009, Abbott Laboratories was found guilty of patent infringement for the drug Humira. The courts required Abbott Laboratories to pay the plaintiff, Centocor, $1.67 billion.
Exceptions and Special Cases
- It's not considered infringement if the product uses recombinant DNA or RNA or Hybridoma technology. This law also includes genetic manipulation.
- If the infringed patent is related to the Food and Drug Administration, the court may make the effective date of penalties fall after the patent expires.
- In special cases, an injunction against selling a product commercially may be reversed if it's an approved drug or biological product for humans or animals.
If you need help with patent infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.