PPatent Infringement"... these are the dreaded words you may see from a patent owner's attorney if you don't do your homework up-front. But what is
patent infringement and how can you prevent it?
1. Legal Rights Afforded by a Patent
An issued patent gives the patent owner (i.e. the inventor, or assignee to which the inventor's patent rights were sold) legal rights to stop other persons and companies from:
1) making (i.e. manufacturing);
2) using (typically your customers);
3) selling (typically your distribution chain of sales persons, wholesalers, and retailers); or
4) importing (manufacturing in a foreign country and bringing the product into the country in which the patent issued)
any product (or method) that utilizes the patented invention in the country
in which the patent issued while the patent is in-force.
2. Direct and Contributory Patent Infringement
Direct patent infringement occurs by directly violating the legal rights of the patent owner by: 1) making; 2) using; 3) selling; or 4) importing anything that utilizes the patented invention in the country in which the patent issued and is in-force.
Contributory patent infringement occurs when you induce, contribute to, or cause other persons or campanies to infringe a patent.
An example of this is if you are owner of a manufacturing company that supplies component parts to another company that builds products that infringe a patent. Even though your component parts themselves do not infringe the patent, your company is contributing to the infringement of the patent by the other company.
3. Scope of Legal Protection of a Patent
The scope of the legal protection afforded by a patent is described in the "claims" at the end of the the patent. You must have every element (i.e. requirement) of one or more claims of the patent (or the "equivalent" thereof) to infringe a patent. This is a very technical analysis for which you must consult a licensed patent attorney or agent to review and write you an "infringement opinion".
4. Limited Time Period to Infringe a Patent
The legal rights offered by a patent are granted only for a limited period of time. You cannot infringe an expired patent, though it can still be used in determining patentability (i.e. whether a patent should be granted) of your proposed invention.
Utility patents that issue now are now in-force for a maximum of 20 years from the filing date of the patent application on which the patent issued. the "patent pending" period affords only a deterent to copying your invention since the patent rights begin when the patent issues. The in-force time period is subject to periodically paying "maintenance fees" to keep the patent in force for its full time period.
Design patents are in force for 14 years from the issue date. No maintenance fees must be paid to keep design patents in force for their full time period.
Upon "expiration" of a patent due to passing of this limited time period, the legal rights granted by the patent to the patent owner are extinguished and anybody can practice the formerly patented invention, subject to any other patents still in-force.
5. Determining Patent Infringement
Determining patent infringement is a VERY technical analysis for which you need to consult an experienced patent attorney or agent to review and write you an infringement opinion regarding whether or not you infringe a patent.
6. Actual Damages For Patent Infringement
Actual damages (i.e. what it costs you over and above likely substantial legal fees) awarded for patent infringement are typically based on the number of units of the product and the value of each unit of the product made, used, sold, or imported in violation of the patent owner's rights. Therefore, the more units you make, use, sell, or import, the higher the likely damages awarded to the patent owner by a court.
The damages for patent infringement can, under certain circumstances, be "retroactive" or begin at the publication date of the patent application (18 months after the filing date of the patent application on which the patent issued or 18 months after the filing date of any patent application on which the patent was based) under certain certain cercumstances.
7. Willful Patent Infringement
If you knowingly infringe a patent, a court can award the patent owner punitive damages or "treble damages" of up to 3 times the "actual damages" for "willful" patent infringement.
Therefore, if you know of one or more patents that you might possibly infringe, obviously have the patent(s) reviewed by a licensed patent attorney or agent and the written infringement opinion written prior to making, using, selling, or importing EVEN ONE UNIT of a product that might utilize the patented invention.
If the infringement opinion says that you likely infringe a patent, then starting to or continuing to: 1) make; 2) use; 3) sell; or 4) import products that likely infringe the patent is WILLFUL PATENT INFRINGEMENT that will likely get you into SERIOUS TROUBLE and cost you dearly!
If the infringement search is favorable to you, keep this infringement opinion in your "hip pocket" in case you are ever sued by the patent owner for patent infringement to at a minimum help prevent award of the punitive or treble damages against you.
If the infringement opinion is unfavorable, stating that you may infringe the patent, discuss options such as obtaining a license (permission to use the patented invention) from the patent owner.
8. Business Risk vs. Patent Infringement
Infringement searches are expensive, often costing $5,000.00 or more due to the complex analysis of the claims necessary by the patent attorney or agent.
If you own a large company with a large budget, you might have an infringement search with written patentability opinion done before making, using, selling, or importing even one unit of a product you want to bring to market.
However, most inventors are on a tight budget. Therefore, they want to put off the infringement search to the latest date possible. This is a business decision regarding how much risk the person is willing to take.
At a MINIMUM, you should have a "patentability search" (i.e. a search of in-force and expired patents typically conducted to see if yor invention might be patentable) done by a licensed patent attorney or agent in any country in which you plan to make, use, sell, or import any of your products (or cause other persons or campanies to do so).
This patentability search will typically mostly uncover expired patents along with a few patents that are still in-force. However, it is a much lower cost option that will help give you a "feel" for the particular industry involved, the current "state of the art", and uncover in-force patents on which you may want to have an infringement opinion written.
Prior to possibly incurring a large actual damages award for patent infringement by 1) making; 2) using; 3) selling; or 4) or importing large quantities of products based on your invention (or prior to spending a lot of time and money preparing to do so), I HIGHLY RECOMMEND that you have the infringement search done with written infringement opinion.
Want to have a patentability search with written patentability opinion done quickly and inexpensively to see if your invention might be patentable? Want to see if there are patents that you might infringe before bringing your invention to market or for products currently on the market?
Click on or copy and paste the following URL to your browser:
http://www.inventionpatenting.com/order_patent.htmlWhy take a chance, especially when prevention is easy and inexpensive?
Best regards,
Brian R. Rayve, Esq.
Owner, InventionPatenting.com
