Enforcing Patent Rights

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Some patent experts have compared a patent to a hunting license. It enables the owner to go after anyone who makes, sells, uses or imports the invention into the U.S. These acts are referred to as patent infringements. But litigating against infringers can be expensive and risky. In some cases, a company may defend itself against a claim of infringement by trying to prove that the patent is invalid and should not have been issued.

So what is patent infringement? Typically, it comes in one of two forms: literal infringement or a similar invention that qualifies as an infringement under the doctrine of equivalents.

Literal Infringement

Since the patent claims in the patent application define the boundaries of the invention, they also serve as the reference for infringement. A literal infringement occurs if a defendant makes, sells or uses the invention defined in the plaintiff's patent claims. For example, if an infringing machine includes each and every claimed component, part or step of a patented making apparatus, it is a literal infringement because the defendant's device is actually the same invention in the patent claim.

Doctrine of Equivalents

A second way that a claim can be infringed is if the defendant's invention performs substantially the same function in substantially the same way. This is known as the doctrine of equivalents. There is no formula to determine equivalency. In the case of chemical compositions, for example, a defendant may change one or more ingredients so that there is no literal infringement. The jury or judge must determine if the changed ingredient has the same purpose, quality and function as the ingredient in the patent claim. If it does, then there has been infringement under the doctrine of equivalents.

When Inventions are Improved

A patent can be infringed by means of an improvement. For example, a company improves a device by adding an exhaust and venting system. The company may even obtain a patent on this improvement. However, this does not give the rival company the right to manufacture or use the underlying patented device. Such unauthorized improvement still amounts to an infringement.

Inducing Infringement and Contributory Infringement

Persons who induce or contribute to patent infringement will also be liable for the infringement. The elements of contributory infringement are: (1) sale (2) of a material component of the invention defined by the claims (that is not a staple item of commerce capable of noninfringing use) (3) with knowledge that the component was especially made for use which would infringe the patent. It is also contributory infringement to actively induce or persuade another to make, use or sell the invention covered by the patent claims. In a 2011 Supreme Court case, the Supreme Court ruled that the party inducing the infringement must know they are infringing, however, knowledge can be inferred if the party is willfully blind to the patent – for example, they deliberately don’t disclose to their attorney that they copied the machine.

Willful Infringement

The infringer's intent is generally irrelevant to a finding of patent infringement (although intent may be a factor in contributory infringement and in assessing damages.) Patent infringement does not require that the defendant intended to infringe. However, if patent infringement occurred, the damages for such infringement may be increased up to triple the award if the infringement was willful. Infringement is willful if the defendant knew of the plaintiff's patent and knew that the making, using or selling of defendant's device infringed at least one claim of the plaintiff's patent. This determination may be based upon the defendant's bad faith activities or by the fact that the defendant failed to exercise due care.

Defensive Maneuvers

As mentioned, a suit for patent infringement usually triggers a defensive attack on the validity of the patent. The litigation becomes two separate battles -- one in which the plaintiff claims damage from infringement and the other in which the defendant attempts to terminate the plaintiff's patent rights.

 Act Promptly

Although there is no time limit (or statute of limitations) for filing a patent infringement lawsuit, a patent owner will only be awarded money damages for infringements committed during the six years prior to the filing of the lawsuit. Despite the fact that there is no law setting a time limit, courts will not permit a patent owner to sue you for infringement if the owner has waited an unreasonable amount of time to file the lawsuit (a principle known as “laches”). Generally, courts consider anything over a six-year period an unreasonable delay in filing the suit, unless the patent owner can provide some excuse for the delay.