Patent Infringment

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Patent infringement

Patent infringement is the commission of a prohibited act with respect to a patented inventionwithout permission from the patent holder. Permission may typically be granted in the form of alicence. The definition of patent infringement may vary by jurisdiction, but it typically includes

using or selling the patented invention. In many countries, a use is required to be commercial (orto have a commercial purpose) to constitute patent infringement.

The scope of the patented invention or the extent of protection is defined in the claims of thegranted patent. In other words, the terms of the claims inform the public of what is not allowedwithout the permission of the patent holder.

Patents are territorial, and infringement is only possible in a country where a patent is in force.For example, if a patent is filed in the United States, then anyone in the United States isprohibited from making, using, selling or importing the patented item, while people in othercountries may be free to make the patented item in their country. The scope of protection may

vary from country to country, because the patent is examined by the patent office in each countryor region and may have some difference ofpatentability, so that a granted patent is difficult toenforce worldwide.

Elements of patent infringement

Typically, a party which manufactures, imports, uses, sells, or offers for sale patentedtechnology, during the term of the patent and within the country that issued the patent, is

considered to infringe the patent.

The test varies from country to country, but in general it requires that the infringing party'sproduct (or method, service, and so on) falls within one or more of the claims of the patent. Theprocess employed involves "reading" a claim onto the technology of interest. If all of the claim'selements are found in the technology, the claim is said to "read on" the technology; if a singleelement from the claim is missing from the technology, the claim does not literally read on thetechnology and the technology does not infringe the patent with respect to that claim.

In response to allegations of infringement, an accused infringing party will generally assert oneor more of the following:

it was not practicing the patented invention; it was not performing any infringing act in the territory covered by the patent; the patent has expired; the patent (or the particular claim(s) alleged to be infringed) is invalid, because the

invention in question does not meet patentability or includes a formal defect, renderingthe patent invalid or unenforceable;

it has obtained a license under the patent;
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the patent holder is infringing patent rights belonging to the accused infringing party, andthe party may resolve the dispute in settlement or cross-licensing.

Indirect infringement

Under certain jurisdictions, there is a particular case of patent infringement called "indirectinfringement." Indirect infringement can occur, for instance, when a device is claimed in a patentand a third party supplies a product which can only be reasonably used to make the claimeddevice.

Legislation

United States

In United States law, an infringement may occur where the defendant has made, used, sold,offered to sell, or imported an infringing invention or its equivalent. One also commits indirect

infringement if he actively and knowingly induces another to infringe, and is liable for thatinfringement. Types of "indirect infringement" include "contributory infringement" and "inducedinfringement."

No infringement action may be started until the patent is issued. However, pre-grant protection isavailable under 35 U.S.C. 154(d), which allows a patent owner to obtain reasonable royaltydamages for certain infringing activities that occurred before patent's date of issuance. This rightto obtain provisional damages requires a patent holder to show that (1) the infringing activitiesoccurred after the publication of the patent application, (2) the patented claims are substantiallyidentical to the claims in the published application, and (3) the infringer had "actual notice" ofthe published patent application.

The Patent Reform Act of 2009 will, if enacted, make changes such as tightening the definitionof "willful" infringement and limit infringement cases to states where the defendant's businessoperates.

Clearance search, and clearance, validity and enforceability opinions

A clearance search, also called freedom-to-operate search or infringement search, is a searchdone on issued patents or on pending patent applications to determine if a product or processinfringes any of the claims of the issued patents or pending patent applications. A clearancesearch may also include expired art that acts as a 'safe harbor' permitting the product or process

to be used based on patents in the public domain. These searches are often performed by one ormore professional patent searchers who are under the direction of one or more patent attorneys.

A clearance search can be followed by a clearance opinion, i.e. a legal opinion provided by oneor more patent attorneys as to whether a given product or process infringes the claims of one ormore issued patents or pending patent applications. Clearance opinions may be done incombination with a "validity and enforceability" opinion. A validity and enforceability opinion isa legal opinion as to whether a given patent is valid and/or enforceable. In other words, a validity
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opinion is a legal opinion or letter in which a patent attorney or patent agent analyzes an issuedpatent and provides an opinion on how a court might rule on its validity or enforceability[.Validity opinions are often sought before litigation related to a patent. The average cost of avalidity opinion (according to one 2007 survey) is over $15,000, with an infringement analysisadding an additional $13,000.

The cost of these opinions for U.S. patents can run from tens to hundreds of thousands of dollars(or more) depending upon the particular patent, the number of defenses and prior art references,the length of the prosecution file history, and the complexity of the technology in question.

An exculpatory opinion (setting forth reasons the patent is not infringed, or providing otherdefenses such as prior use, intervening rights, or prior invention) is also possible.

Patent infringement insurance

Patent infringement insurance is an insurance policy provided by one or more insurance

companies to protect either an inventor or a third party from the risks of inadvertently infringinga patent.

For inventors, patent infringement insurance covers legal costs in case they have to sue aninfringer to enforce their patent.

For third parties, patent infringement insurance covers their legal costs in case they are sued forpatent infringement by an inventor.

Patent infringement insurance is generally considered too expensive to be worth it. Thepremiums must be high, however, due, at least in part, to the high legal costs of patent

infringement cases. A typical patent infringement case in the US costs 1 - 3 million dollars inlegal fees for each side.

Types of Patent infringement:

The Doctrine of Equivalents in Patent Infringement

A patent contains several partsa specification, usually one or more drawings, and always oneor more claims. No matter how much a questioned machine, manufacture, composition of matter

or process may look like the specification and drawings of a patent, it is only the claims of thepatent which can be infringed. For that reason, if an issue of infringement arises, it becomesnecessary to examine the claims of the patent in question.

The first step is to "read" each claim of the patent upon the accused structure or process. Everyrequirement of each claim must be considered to see if each thing set out in the claim alsoappears in the accused practice. If one or more things set forth in a claim is not present in thepractice being reviewed, there is no infringement of that claim. On the other hand, if each thing
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which is set out in even one claim of the patent is present in the accused structure or process,then there is direct and literal infringement. When literal infringement is found, that is normallythe end of the inquiry.

When the claims of a patent are read against an accused practice, they may be so close to

identical that infringement is clear. Also, the accused practice may be so remote from the patentthat there is no possibility of infringement. Very often, however, there are some differences,requiring further study. Sometimes, such differences are incorporated into a design afterknowledge of a patent in an effort to avoid infringement. Then, the question presented is whetherthe design is sufficiently different from the patent to be held to be non- infringing. If the designis too close to the patent, it will infringe. If the design is remote enough, it will not infringe. TheU.S. Supreme Court has stated: "One who seeks to pirate an invention, like one who seeks topirate a copyrighted book or play, may be expected to introduce minor variations to conceal andshelter the piracy. Outright and forthright duplication is a dull and very rare form ofinfringement."

One reason that literal infringement of a patent is a dull form of infringement is that where thepotential infringer knows of the patent and takes steps to avoid infringement by making changesfrom the exact thing which is disclosed and claimed in the patent. At the same time, theindividual may copy as much of the patent as thought possible without becoming liable forinfringement. When that happens, the issue raised is whether the accused structure or process isthe "equivalent" of what is claimed in the patent. A similar problem can arise where a practice isadopted without knowledge of a patent, and the patent becomes known only after a businesscommitment has been made to follow the practice.

The rule of law for determining equivalency as laid down by the Supreme Court is quite simple:"If two devices do the same work in substantially the same way, and accomplish substantially the

same result, they are the same, even though they differ in name, form, or shape." Despite theseeming simplicity of this rule, its application to a particular case is often complex.Determination of equivalency frequently involves conflicting opinions of experts and disputes asto scientific or engineering facts. The issue is often resolved by the testimony of expert witnessesand the decision may rest on which of the experts is the more believable. Things which areequivalent for one purpose may not be for other purposes. In one well- known case, the patentincluded claims for welding rods having a flux containing a major proportion of "alkaline earthmetal silicate." The accused welding rods included a flux composed principally of "manganesesilicate," which is not an alkaline earth metal silicate. Nevertheless, the accused welding rodswere held to infringe because of testimony that manganese and magnesium were similar in manyof their reactions and that they served the same purposes in fluxes.

Most patents are not issued with the claims originally filed. The claims of most patentapplications are rejected, and the claims are amended with the inclusion of more detailed andrestrictive language. If an examiner rejects the claims as unpatentable over the prior art and theclaims are amended to read more narrowly to avoid the prior art, the patentee is barred fromasserting the claims in the broader sense. Since he or she gave up the broader construction toobtain allowance of the claims, the patentee is not permitted to assert that the broaderconstruction is the equivalent of the claim which was finally allowed. The process of rejection


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and amendment followed by allowance is shown by correspondence in the Patent and TrademarkOffice file. That file history is contained in a heavy paper jacket known as a "file wrapper." As aresult, the rejection of a claim followed by a narrowing and more limiting amendment is knownas a "file wrapper estoppel."

It is also possible for a device to be so far changed in principle from a patented device that itperforms the same or a similar function in a substantially different way, even though it fallswithin the literal words of the claim. This situation can occur when the accused device is so farremoved from the invention as disclosed in the patent that it is considered in law to be a differentthing entirely. Even if the claims literally read on the thing which is accused, the claims arelimited by construction to cover the invention which was disclosed in the patent and to exclude athing which is different from the disclosed invention. This result is sometimes known as the"Reverse Doctrine of Equivalents."

Possible infringement of a patent claim must never be taken lightly. Issues of directinfringement, equivalency, file wrapper estoppel, and limitation of the claims to an invention as

disclosed all must be considered before concluding that infringement does or does not exist.

Standards for determining equivalents

United Kingdom

The United Kingdom has never employed a doctrine of equivalents approach.. As a signatory tothe European Patent Convention (EPC), the UK follows the Protocol on the Interpretation ofArticle 69 of the EPC, which requires member states to draw a balance between interpretingpatent claims with strict literalism (with the description and drawings only helping resolveambiguity) and regarding the claims as a mere guideline only.

United States

In the United States, the doctrine of equivalents analysis is applied to individual claimlimitations, not to the invention as a whole.

One way of determining whether a difference is "insubstantial" or not is called the "tripleidentity" test. Under the triple-identity test, the difference between the limitation in the accuseddevice and the limitation literally recited in the patent claim may be found to be "insubstantial" ifthe limitation in the accused device:

1.

It performs substantially the same function2. In substantially the same way3. To yield substantially the same result

Harmonization attempts

Attempts have been made to harmonize the doctrine of equivalents.
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For instance, Article 21(2) of1991 WIPO's "Basic Proposal for a Treaty Supplementing theParis Convention states:

"(a) (...) a claim shall be considered to cover not only all the elements as expressed in the claim

but also equivalents.

(b) An element ("the equivalent element") shall generally be considered as being equivalent to

an element as expressed in a claim if, at the time of any alleged infringement, either of the

following conditions is fulfilled in regard to the invention as claimed:

(i) the equivalent element performs substantially the same function in substantially the same

way and produces substantially the same result as the element as expressed in the claim, or

(ii) it is obvious to a person skilled in the art that the same result as that achieved by means of

the element as expressed in the claim can be achieved by means of the equivalent element."
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Documents

Patent Infringment