What is Patent Infringement?
At it’s most basic form, patent infringement is a wrong committed by a third party against the rights of a patent holder during the term of a patent. A party can commit patent infringement by using, making, selling, offering to sell, or importing a patented invention to the United States without the express permission of the patent holder. Patent infringement can be committed at any time while a patent is in its grant state, meaning that the patent term is still active. What constitutes patent infringement can vary from country to country, but this is the most encompassing definition for patent infringement.
Utility patents last for 20 years from the date an inventor files his patent application and design patents last for 15 years from the date the patent office grants a patent application. While a patent is granted (in its active state) the patent holder has the right to stop anyone from using, making, selling, offering to sell, and importing the patented invention to the United States without his permission.
If anyone uses, makes, or sells the patented invention without the patent owner’s permission in the United States, the patent holder can sue them in Federal District Court for patent infringement. Patents issued by the USPTO only protect inventors in the United States. Any infringement that happens in a different country, has to be resolved in that country under that country’s patent laws.
For example, if you patent a pair of nail clippers in the United States and someone in China copies the nail clippers and sells them in China or Brazil, you are out luck and cannot do anything about it unless you also patent your product in both China and Brazil.
So, if you’re a patent holder and you anticipate that you want to profit from your invention by selling it or manufacturing it abroad, you should also patent your invention in all the countries where you want patent protection. You can do this by either filing a patent application in every country where you want protection or by filing a PCT (Patent Cooperation Treaty) application with WIPO.
Determining Patent Infringement
The analysis for determining patent infringement is the same whether you’re dealing with a utility patent, design patent, or plant patent. If you just received a cease and desist letter from a company that claims that you’re infringing upon its patent, take a moment, check the cease and desist letter and check to see the specific patent that they claim you’re infringing upon.
To determine whether patent infringement has taken place, you need to pull up the patent they claim you’re infringing upon, you can do this by simply googling the patent, using Google Patents to find the patent, or searching for the patent using the USPTO patent database. Once you’ve found the patent they’re referencing, you should look at the patent claims.
Read the patent claims carefully because for there to be patent infringement, the product the patent holder alleges infringes on his patent must function exactly the same as one of the claims of the patented invention.
Each patent claim is typically made up of different elements, so to prove patent infringement, the patent holder has to prove that all elements of a single patent claim are the same. So, if your invention functions differently from the patent claim or uses different steps to achieve the same result as a patent claim, you may be able to successfully defend against patent infringement.
That said, if your invention functions substantially similarly to the patent holder’s invention, you may still be liable for patent infringement. To determine infringement, the court will look at all of the evidence it has to determine whether patent infringement has occurred.
Since we don’t know anything about your specific case, if you’ve received a cease and desist letter from a party claiming that you infringed upon their patent, it’s best to contact your patent attorney and ask them to evaluate your specific situation.
To assist your attorney, you should talk to your product engineer, ask them to look at what the patent holder alleges infringes upon his patent and tell him to prepare notes as to how your invention or product differs from the patent holder’s invention. This will assist your patent attorney in determining whether infringement has occurred.
What Happens if There is Patent Infringement?
If a patent holder can show that a party infringed upon his patent, the court may award the patent holder an injunction to stop the infringer from continuing to use, make, sell, or import the infringing product to the United States without the patent holder’s permission.
Also, the court may award the patent holder monetary damages in the form of either royalties or lost profits. Royalties are often determined by looking at what the patent holder charges other parties to license his invention, royalties paid for the use of similar inventions, the popularity of the patented product, and the benefit that’s added to the infringer’s product by using the patented invention. There is a long list of factors, but we believe that these are the most important factors to focus on.
Defending Against Patent Infringement
When parties are served with patent infringement lawsuits, they often use the following defenses to defend against a patent infringement lawsuit: (1) defending against the lawsuit by arguing that the patent holder’s patent is not valid either because it’s not novel (new) or because the invention was obvious at the time of filing the patent application.
For example, if a patent holder has patented what he claims is a new nail clipper that promises more precise nail clipping, an alleged infringer can defend the lawsuit by arguing that the invention is not novel (new) by providing evidence that the patent holder’s nail clippers where publicly available or patented by a different party and therefore, the patent holder’s patent should be invalidated and since the patent is invalid, no infringement has occurred.
The second most common defense is (2) arguing that your product or design does not infringe upon the patent holder’s invention because it’s different than what the patent holder has patented.
For example, if you’ve developed an algorithm for predicting the stock market and you get sued for patent infringement. The patent holder then claims that your algorithm infringes upon a patent that he holds, you can defend the lawsuit on the grounds that your algorithm does not infringe upon his patent because it uses a different method to achieve its result.
Is Patent Infringement Civil or Criminal?
Normally, patent infringement is addressed through civil means, meaning that the infringer is not criminally prosecuted. In the United States, patent infringement is a strict liability civil offense, meaning that if a patent holder is able to show that someone else used, made, sold, or offered to sell his patented invention without the patent holder’s express permission, the infringer would be strictly liable for patent infringement in a civil lawsuit.
The United States does not have any criminal statutes for patent infringement, all patent infringement matters are handled in civil courts. Whether criminal punishment should be imposed on patent infringers is a topic for another day.
Strict liability means that the patent holder does not need to show that the infringer knew he was infringing upon the patent holder’s patent, but only that the infringer’s product or invention functions the same as the patent holder’s invention. If a patent holder is successful in his lawsuit, he may be able to recover monetary damages, as well as obtain injunctive relief to stop the infringer from infringing upon his patent.
How to Avoid Patent Infringement?
If you want to avoid patent infringement, you should conduct a patent search for relevant inventions. Once you’ve found inventions that are similar to the one you want to make, make sure that your invention functions differently from the inventions with live patents.
It’s okay if your invention achieves the same result as other inventions, but the key is to have your invention achieve the desired result differently from any patented or publicly disclosed inventions.
Said differently, your invention has to work differently from currently patented inventions. Look at other patents that are similar to the invention you’re developing and find a way to make your invention work differently, yet achieve the same result.
If you don’t know how to perform a patent search, contact an experienced patent and hire them to conduct an analysis of relevant patents to determine whether your invention infringes on any live patents.
Note: Merely changing the appearance of an invention is never enough to avoid patent infringement. If your invention works the same way as a patented invention but looks totally different, you may still be liable for patent infringement because patents not only protect how an invention looks, but also how an invention works or how it achieves its results.
So, if you’re working on a product or invention, it’s worth your money and time to hire an attorney to research your invention, as well as relevant inventions to clear your invention.
At this point, it’s apparent that patent infringement occurs when a party uses, makes, sells, offers to sell, or imports a patented invention to the United States without the patent owner’s express permission.
Patent infringement can be avoided by taking the time to research relevant patents in the field of your invention, and ensuring that your invention not only looks different but functions differently from patented inventions.
Infringing on the patent of an individual can be costly and usually leads to a civil lawsuit where the infringer has to pay damages to the patent holder and cease his infringing activities.
We also covered how patent infringement is determined by the courts, as well as some of the defenses that those accused of patent infringement may use to defend against a patent infringement lawsuit. If you have any general questions or comments, please feel free to leave them in the comments section below.