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Patent Infringement

A patent excludes all others from making, using, offering for sale, selling and importing the thing that is patented. One who makes, uses, offers for sale, sells or imports a patented item is a direct infringer of the patent. Thus, a patent's value is derived from excluding others from markets of interest.

In addition, under the doctrine of "contributory infringement", one may indirectly infringe a patent rather than directly infringing the patent. Under this doctrine, a person who sells a material component of a patented invention, knowing that the component was especially made or adapted for use in the infringement of the patent and that it is not a staple article or commodity of commerce suitable for substantial noninfringing use, is liable for contributory infringement. Examples of staple articles and commodities include cameras, inkjet printers, photocopying machines or other items produced in large quantities for meeting a steady demand.

Patentee's rights
If a patentee believes his patent rights are infringed, either directly or indirectly, he may give notice to the alleged infringer. Notice may be given in two basic ways. A patent owner may give notice to the public in general that an item is patented by marking or affixing the word "patent" or the abbreviation "pat." to the item, together with the patent number. If the character of the item precludes this being done, then the patent owner may mark or affix such notice to the package in which the item is contained. Please note that "Patent pending" (sometimes abbreviated by "pat. pend." or "pat. pending") or "patent applied for" are legal designations or expressions that can be used in relation to a product or process once a patent application for the product or process has been filed, but prior to the patent being issued or the application abandoned. The marking serves to notify the public, business, or potential infringers who would copy the invention that they may be liable for damages (including back-dated royalties), seizure, and injunction once a patent is issued.

Whether or not the word "patent" or the abbreviation "pat." and patent number are affixed to the item or package, the patent owner may put the alleged infringer on actual notice of infringement by sending him a notice of infringement letter. This is the second way notice may be given. However, satisfying the notice requirement in this manner without triggering an action for declaratory judgment by the alleged infringer carries some risk. In a declaratory judgment action, the alleged infringer will ask a court having proper jurisdiction to declare the patent invalid and not infringed or that the patent should at least be limited in scope. A declaratory judgment lawsuit can be rightfully filed when the alleged infringer can demonstrate a "reasonable apprehension of being sued" for infringement. Such a "reasonable apprehension of being sued" may arise when he receives the notice of infringement letter. Thus, a declaratory judgment lawsuit is a preemptive strike by the alleged infringer before the patent owner even files suit.

Consult an Attorney
An intellectual property attorney should be consulted before the patentee sends a notice of infringement letter to an alleged infringer. The attorney can advise the patentee as to the exact wording of the notice in order to prevent the alleged infringer from making a compelling argument that he has a "reasonable apprehension of being sued." For example, the notice may merely offer a license, if the patent owner is willing to grant a license, rather than blatantly accusing the other party of infringing a patent and threatening suit. However, there is some dispute in the legal community as to whether or not such a carefully worded notice letter is sufficient to avoid a declaratory judgment.

  • If infringement is proved, the patent owner is entitled to damages. Damages may include:
    • Lost profits the patent owner would have made absent the infringement
    • A reasonably royalty if lost profits cannot be proved
    • Enhanced damages in the form of treble damages if the infringement was willful
    • Prejudgment interest calculated from the date of infringement to the date of judgment
    • Post judgment interest calculated from the date of judgment to the date of payment
    • Reasonable attorneys fees. However, attorney fees are rarely granted, but may be granted in appropriate cases, such as in the case of litigation misconduct.

The Cost Of Enforcing You Patent
It should also be mentioned that enforcing patent rights can be costly. A patent infringement suit can cost approximately five hundred thousand to four million dollars or more in litigation costs, not including one's time to review documents and respond to discovery requests. This is in addition to the costs incurred to obtain and maintain the patent in force. Moreover, few law firms will pursue a patent infringement case on a contingent fee basis, unless evidence of infringement is compelling.

Another consideration is how does one steer clear of infringing someone else's patent? One can avoid infringing another's patent by asking an intellectual property attorney to perform a "clearance" study as early as possible, such as during the product development stage. The purpose of the clearance study would be to discover issued patents that cover the product the business plans to market. Early identification of a patent issued to another and that covers a proposed product may provide an opportunity to design-around the patent and avoid infringement. If it is not feasible to design-around the patent, then a clearance study might alert the business owner as to whom to approach for a license. The U.S. Patent & Trademark Office website provides a copy of statutory patent infringement laws.

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