What constitutes infringement of a patent?
To decide whether an inventor is violating (infringing) a patent, it is necessary to carefully examine the patent’s “claims.” (Claims are terse statements of the scope of the invention, and most patents contain more than one of them.) The elements of each claim must be compared with the elements of the accused infringer’s invention (usually a device or process).
If the elements of a patent claim match the elements of the device or process (called “reading on” or “teaching” the device or process), an infringement has occurred. Even if the claims don’t literally match the elements of the infringing device, it is possible that a court would find an infringement by applying what’s known as the “doctrine of equivalents”; that is, the patented invention and the allegedly infringing device or process are sufficiently equivalent in what they do and how they do it to warrant a finding of infringement.
For example, Steve invents a tennis racket with a score keeper embedded in the racket handle’s end. The invention is claimed as a tennis racket handle that combines grasping and score-keeping functions. Steve receives a patent on this invention. Later, Megan invents and sells a tennis racket with a transparent handle that provides a more sophisticated score-keeping device than Steve’s racket. Even though Megan’s invention improves on Steve’s invention in certain respects, it will most likely be held to be an infringement of Steve’s invention, for one of two reasons:
- Megan’s invention teaches the same elements as those claimed in Steve’s patent (a tennis racket handle with two functions), or
- When considering what it is and how it works, Megan’s invention is the substantial equivalent of Steve’s invention (using the doctrine of equivalents).
In 2002, the Supreme Court handed down a ruling ( Festo Corp. v. Shoketsu Kinzoku Kabushiki Co. Ltd., 535 U.S. 722 (2002)) that makes it harder for patent owners who amended their patent claims to assert that others are infringing their patent. In essence, patent owners can use the doctrine of equivalents only if they can show that their amendment did not “surrender” the equivalents at issue — a complex and confusing standard that requires the advice of a patent attorney.
In 2007, the Supreme Court modified the standard of nonobviousness applied in patent infringement cases for combination inventions and determined that “ordinary innovations” are not patentable (KSR v. Teleflex, 550 U.S. __ 2007).
If a case is brought to enforce a patent on a method or process invention, the defendant can escape liability if they were using the invention more than one year prior to the patent application date.
A patent owner may enforce his patent by bringing a patent infringement action (lawsuit) in federal court against anyone who uses his invention without permission. If the lawsuit is successful, the court will take one of two approaches. It may issue a court order (called an injunction) preventing the infringer from any further use or sale of the infringing device, and award damages to the patent owner. Or, the court may work with the parties to hammer out an agreement under which the infringing party will pay the patent owner royalties in exchange for permission to use the infringing device.
Bringing a patent infringement action can be tricky, because it is possible for the alleged infringer to defend herself by proving to the court that the patent is really invalid (most often by showing that the U.S. Patent and Trademark Office (USPTO) made a mistake in issuing the patent in the first place). In a substantial number of patent infringement cases, the patent is found invalid and the lawsuit dismissed, leaving the patent owner in a worse position than before the lawsuit.
Patent protection usually ends when the patent expires. Here are the expiration dates:
- For all utility patents filed before June 8, 1995, the patent term is 20 years from date of filing, or 17 years from date of issuance, whichever period is longer.
- For utility patents filed on or after June 8, 1995, the patent term is 20 years from the date of filing.
- For design patents, the period is 14 years from date of issuance.
- For plant patents, the period is 17 years from date of issuance.
A patent may expire if its owner fails to pay required maintenance fees. Usually this occurs because attempts to commercially exploit the underlying invention have failed and the patent owner chooses to not throw good money after bad.
Patent protection ends if a patent is found to be invalid. This may happen if someone shows that the patent application was insufficient or that the applicant committed fraud on the U.S. Patent and Trademark Office (USPTO), usually by lying or failing to disclose the applicant’s knowledge about prior art that would legally prevent issuance of the patent. A patent may also be invalidated if someone shows that the inventor engaged in illegal conduct when using the patent — such as conspiring with a patent licensee to exclude other companies from competing with them.
Once a patent has expired or has been invalidated, the invention described by the patent falls into the public domain: it can be used by anyone without permission from the owner of the expired patent. The basic technologies underlying television and personal computers are good examples of valuable inventions that are no longer covered by in-force patents.
The fact that an invention is in the public domain does not mean that subsequent developments based on the original invention are also in the public domain. Rather, new inventions that improve public domain technology are constantly being conceived and patented. For example, televisions and personal computers that roll off today’s assembly lines employ many recent inventions that are covered by in-force patents.
Although most inventors are concerned with the rights a patent grants during its monopoly, or in-force, period (from the date the patent issues until it expires), the law actually recognizes five “rights” periods in the life of an invention. These five periods are as follows:
1. Invention conceived but not yet documented. When an inventor conceives an invention, but hasn’t yet made any written, signed, dated, and witnessed record of it, the inventor has no rights whatsoever.
2. Invention documented but patent application not yet filed. After making a proper, signed, dated, and witnessed documentation of an invention, the inventor has valuable rights against any inventor who later conceives the same invention and applies for a patent. The invention may also be treated as a “trade secret” — that is, kept confidential — which gives the inventor the legal right to sue and recover damages against anyone who immorally learns of the invention (for example, through industrial spying).
3. Patent pending (patent application filed but not yet issued). During the patent pending period, including the one-year period after a provisional patent application is filed, the inventor’s rights are the same as in Period 2 above. With one exception, discussed below, a patent application does not give an inventor any extra rights — only the hope of a future monopoly that begins when a patent issues. However, most companies that manufacture a product that is the subject of a pending patent application will mark the product “patent pending” in order to warn potential copiers that if they copy the product, they may have to stop later (and thus scrap all their molds and tooling) if and when a patent issues.
Eighteen months after filing, and while the application is pending, the U.S. Patent and Trademark Office (USPTO) will publish the application unless the applicant files a Nonpublication Request at the time of filing and doesn’t file for a patent outside the U.S. If the application is published during the pendency period, an inventor can later obtain royalties from an infringer from the date of publication provided (1) the application later issues as a patent; and (2) the infringer had actual notice of the published application.
4. In-force patent (patent issued but hasn’t yet expired). After the patent issues, the patent owner can bring and maintain a lawsuit for patent infringement against anyone who makes, uses, or sells the invention without permission. The patent’s in-force period lasts from the date it issues until it expires. Also, after the patent issues, it becomes a public record or publication that blocks others from getting patents on the same or similar inventions — that is, it becomes “prior art” to anyone who files a subsequent patent application.
5. Patent expired. After the patent expires, the patent owner has no further rights, although infringement suits can still be brought for any infringement that occurred during the patent’s in-force period, as long as the suit is filed within the time required by law. An expired patent remains a valid “prior-art reference” forever.
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Howard M. Cohn & Associates has experience in all aspects of enforcing a patent. Schedule an appointment or call us at 800-613-1067 for more information.
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Howard M. Cohn & Associates has extensive and varied experience in all aspects of Intellectual Property law, with a unique specialty in patent and trademark preparation and prosecution. Schedule an appointment or call us at 800-613-1067.