As a patent lawyer drafting patent applications, I always draft the claims to catch infringers and provide maximum coverage for the resulting patent which is a limited monopoly granted by the federal government to inventors in exchange for the patent teaching others how to implement their inventions. Patents grant the patent owner or the patentee the right to prohibit others from using their patented invention without their permission. Patent infringement is a problem that is becoming more common as new products are created, manufactured, distributed, and sold in many different countries.

Table of content

What is Patent Infringement

Types Of Patent Infringement

Examples Of Patent Infringement

Remedies for Patent Infringement

How do you avoid patent infringement

What is Patent Infringement

Patent infringement is the unauthorized use, sale, or importation of a patented invention or product without the permission of the patent holder. In order for an infringement to occur, the accused product or process must be identical or substantially similar to the patented invention, and it must be covered by at least one of the claims of the patent. One commits patent infringement if he or she makes, uses, offers to sell, or sells a product or service containing all elements of a patent claim or its equivalent unless the owner permits it

Patent infringement can be direct or indirect. Direct infringement occurs when a person or company makes, uses, offers for sale, or sells within the United States or imports into the United States a patented invention without permission from the patent holder. Indirect infringement occurs when a person or company actively induces others to infringe a patent or when a person or company supplies or sells components of a patented invention with the knowledge that they will be used to make an infringing product.

When an infringement is alleged, the patent holder may seek relief in federal court by filing a lawsuit against the alleged infringer. In the event of an infringement, the court may award damages, including lost profits, reasonable royalties, and costs associated with the litigation. In some cases, the court may also issue an injunction to prevent the alleged infringer from continuing to use the patented invention.

It’s worth noting that a patent holder may also license a patent for exclusive use or non-exclusive use, and the terms of such license can also affect the patent infringement. Additionally, it’s important to keep in mind that patent laws vary in different jurisdiction and it’s important to consider the specific laws of the jurisdiction in which the infringement is alleged..

The Importance of Claim Drafting to Patent Infringement

When drafting claims for a patent application, it is important to use a strategic approach to capture potential infringers. This can be done by:

  1. Using broad language: Claims should be drafted as broadly as possible to cover all potential infringing products or processes. This can be done by using functional language, such as “a device for” or “a method of”, rather than specific language that describes a particular embodiment of the invention.
  2. Covering multiple embodiments: Claims should be drafted to cover multiple embodiments of the invention, including different variations of the product or process. This can be done by using alternative language, such as “comprising” or “consisting of”, in the claims.
  3. Using multiple dependent claims: Claims should be drafted to include multiple dependent claims that build on the independent claim. This can be done by including specific limitations in the dependent claims that narrow the scope of the independent claim, but still capture potential infringing products or processes.
  4. Using means plus function language: Claims should be drafted using means plus function language when appropriate, to capture potential infringers. This type of claim uses the word “means” in the claim followed by the function of the element.
  5. Claiming both method and apparatus: The patent application should include both method and apparatus claims. This allows the patent holder to assert their patent against both a process and a product that is produced by the process.

It’s worth noting that drafting a patent claim is a very technical process and it’s important to seek the help of a patent attorney or agent who has experience in drafting claims. Additionally, it’s important to keep in mind that patent laws and patentability criteria can vary in different jurisdiction, and it’s important to consider the specific laws of the jurisdiction in which the patent is sought.

Types Of Patent Infringement

Direct Infringement : This is the most obvious type of unauthorized usage, as any patent attorney can tell you. This is when a protected idea or invention is used, produced, used, sold (or attempted to sell), or imported without authorization from its rightful owner. Direct infringement is when the unauthorized version performs exactly the same function or matches the description of the original.

Indirect Infringement: Has two types of infringement. The first is contributory infringement. This refers to the purchase or import of materials intended to be used in a patented product. To defend your patent in this case, you must prove that the materials were only intended to be used as part of your protected patent. Infringement by inducement is another type of indirect infringement. This refers to activities that cause someone to directly infringe a patent. This means that one person or organization must convince another to engage in activities that result in the infringement of the original patent. Even without knowledge of the original Patent, they can still be held responsible.

Willful Infringement: Willful infringement involves the notion of intention. This refers to acts of infringement that disregard patent protection. It means that the infringer knew of the patent but chose to ignore it. Literal infringement is when an exact copy of a patent item is used, sold, or imported. The copied version would include all the features described in the original patent. It’s not common, but it can be just as obvious as willful infringement. Sometimes, literal infringement can be claimed by the infringer that they have the license rights to the product or that the original patent has been invalidated. 

Doctrine Of Equivalents Infringement: It is important to remember that even though the infringing product may not be identical, a judge could find in favor of the patent holder if it performs the exact same function and produces the same results. Even if the patent holder’s product is more efficient, he or she may prevail in this case.

Examples Of Patent Infringement

Thousands of patents are filed every year. Intellectual property infringement lawsuits account for a large portion of civil legal cases that go to court. Here is a compiled list of historical patent infringement cases.

  • Amazon attempted to patent its one-click payment method. The court ruled that it was too obvious to patent.
  • Napster, a file-sharing platform, settled a lawsuit alleging it of illegal distribution of music. Later, it filed for bankruptcy.
  • Google and Microsoft fought for five years over patent disputes involving Motorola smartphones and the Xbox gaming system.

Remedies for Patent Infringement

In case of patent infringement, there are many remedies that you can pursue as a patent owner. These include equitable, monetary relief as well as costs and attorney’s fee.

Monetary Relief

Patent infringement can be rectified by monetary relief in the form of compensatory damages.

  • Compensation damages – Patent owners may be eligible to recover their lost profits due to infringement after they have determined the patent’s value. In cases of willful and deliberate infringement, you can recover up to three times the compensatory damage.
  • Time limit for damages – Damages can only be claimed after the date that the patent was issued. This period is only six years from the filing of an infringement claim.

Equitable Relief

An injunction is a court order that a person does something or prohibits them from doing it. There are two types of injunctions:

  • Preliminary Injunctions – Court orders or petitions made during the early stages of litigation that prohibit parties from performing an act that is not in dispute (e.g. Manufacturing a patent product
  • Permanent injunctions – Final orders from a court directing a person/entity to cease doing certain activities or take certain actions

If the patent owner can show a high likelihood of winning the case and that the case has suffered a permanent injury without injunctive relief, the preliminary injunctive remedy is granted. A patent owner must also show a “clear demonstration” of validity. This includes:

  • Prior judicial ruling regarding patent validity
  • Acceptance of industry standards by others for many years

If the technical framework clearly shows that the patent is valid, it’s clear that the patent is valid.

Permanent injunctive relief is usually granted to the patent owner who prevails, unless it is contrary to public interest.

Attorneys’ Fees

An attorney helps you navigate the complex and stringent procedural requirements of litigation in cases of patent infringement and get to the heart of the matter.

If the patent owner has “committed unjust conduct or been partially involved in bad faith litigation,” then the accused infringer may be required to pay an attorney’s fee.

How do you avoid patent infringement

As an inventor, when a company is still in its early stages of product development, you may need to conduct a freedom-of-operators search. You should consider possible modifications to product design in order to avoid costly and lengthy patent litigation. To avoid patent infringement, the first step is to find out if you have inadvertently stepped on other’s patent claims with your design or solution and if so you can change the design to respect their rights. This can be done through:

An FTO (freedom to operate) search can also be known as a patent infringement search. It is designed to help you evaluate the possibility of infringing another patent. A skilled patent attorney can perform this search and assist you with this risk assessment. FTO searches for utility patents will examine the claims of other patents and determine if your product infringes those claims. You are at risk of being sued if your product falls within the patent claims. The cost of an FTO search can vary depending on the product and the way the results are delivered. The complexity of the product and the work required to conduct the search will impact the cost. You may also need to consider whether you plan on relying on the resulting opinions as part of any defense in the event of a lawsuit being filed. An FTO search may help reduce the risk of patent infringement and subsequent litigation.

Do Your Research

You will be better equipped to design around patents you may infringe once you have received freedom of operation opinion. You should design around utility patents. Learn and analyze the claims of high-risk patents identified by the FTO search. This will allow you to create something similar without infringing any patent claims. By designing around patents, you reduce the risk of being sued for patent infringement and minimize your liability. It is advisable to carefully study the patent’s description and file history. You can find any arguments or modifications made by the applicant to obtain the patent granted. This can also help you avoid patent infringement.

A Patent Claim Determines Infringement

It is crucial to fully understand the anatomy of a patent claim when you look at it in order to design around it. Patent claims can contain multiple features. Patent infringement can be avoided by not having all the features indicated in the patent claim.

Mapping a claim from a patent to an accused product is an important step in determining whether the accused product infringes the patent. Here are the general steps for mapping a claim to an accused product:

  1. Read the claim: Read the claim carefully and understand the scope of the invention as defined by the claim.
  2. Break down the claim: Break down the claim into its individual elements and identify any limitations or requirements that are stated in the claim.
  3. Compare the claim to the accused product: Compare the elements and limitations of the claim to the accused product to determine if the accused product meets all of the requirements of the claim.
  4. Identify any differences: Identify any differences between the claim and the accused product, and determine whether those differences are sufficient to avoid infringement.
  5. Consider the doctrine of equivalents: Consider whether the accused product performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed invention.
  6. Consult with a patent attorney: Consult with a patent attorney who has experience in patent litigation, as they can provide guidance on how to map a claim to an accused product and help assess whether the accused product infringes the patent.

It’s worth noting that mapping a claim to an accused product can be a complex process, and it’s important to consider the specific laws of the jurisdiction in which the alleged infringement is taking place. Additionally, mapping a claim to an accused product is often the first step in determining whether the accused product infringes the patent, and it’s important to keep in mind that further investigation and analysis may be needed to make a final determination of infringement.

Design-Around The claim

To avoid patent infringement by altering the same features of your product, you need to first identify ways to distinguish your idea from the patented invention. Consider what makes your idea unique. Then you can build on your idea, tweak the features of your product and improve it over the patent-protected invention. This type of product development can be done after an FTO search. It will help you avoid patent infringement and reduce the risk of litigation. Designing around patents can lead to the creation of new designs that could mature into intellectual property.

Designing around a claim is a process by which a company can develop a product or process that does not infringe on an existing patent. Here are the general steps for designing around a claim:

  1. Identify the claim: Identify the claim or claims of the patent that you believe may be relevant to your product or process.
  2. Analyze the claim: Analyze the claim to understand its scope and the specific elements that are required in order to infringe the claim.
  3. Identify alternatives: Identify alternative ways of achieving the same result as the claimed invention without using the specific elements or limitations of the claim.
  4. Test the alternatives: Test the alternatives to ensure that they do not infringe the claim and that they achieve the same or similar results as the claimed invention.
  5. Document the process: Document the process of designing around the claim, including the alternatives that were considered and the reasoning behind the final design.
  6. Consult with a patent attorney: Consult with a patent attorney who has experience in patent litigation, as they can provide guidance on how to design around a claim and help assess whether the design avoids infringement.

It’s worth noting that designing around a claim can be a complex process and it’s important to consider the specific laws of the jurisdiction in which the product or process will be used. Additionally, it’s important to keep in mind that designing around a claim may not always be possible and it may be necessary to obtain a license from the patent holder.

Now over to you

It is significant to be able to identify the possible patent infringement scenarios that could occur and to know how to best protect your patents. We are here to assist you if and when you need to defend your Patent in Court. Contact us for more information.