I am often approached by inventors who believe that a product on the market is infringing upon their utility patent. This belief invites the question, “How can an inventor know for certain that something is fringing upon their patent?”
Thankfully, 35 U.S. Code § 271 provides detailed guidelines as to what constitutes the infringement of a patent. Section 271 is rather lengthy, but for our purposes, demonstrating that patent infringement which merits an “action for patent infringement” requires three things:
- Proof that your patent is valid.
- An act of infringement (someone doing something to infringe your patent).
- A detailed comparison showing that the product in question incorporates all of the distinguishing elements of one or more of your independent patent claims.
Supplying these three pieces of evidence is a lengthy and complicated process. Let’s break it down a bit.
Proving your patent is valid.
First, it has to be shown that your patent is valid. Unsurprisingly, many inventors respond to this with, “But the patent was granted, therefore it’s valid.”
This isn’t actually the case. When a patent is granted, there is a presumption that it is enforceable. However, this presumption can be overcome if it’s shown that the examiner missed something during the examination.
The sad truth is, patent examiners miss evidence of prior art or mistakes on the inventor’s part all the time. There are a number of ways a patent could be invalidated, including:
- The patentable features existed before the application was filed.
- The patent contains information in the claims that was not anywhere in the patent when it was originally filed.
- The patent was granted for something that Congress never intended to grant a patent for.
Of those three, the first is the most common point of failure. So, in order to prove the validity of a client’s patent, I perform a detailed search. Essentially what I do is look for patents that have content which are as similar as possible to the client’s patent claims. I break down the features of these other patents, and see if any of them are substantially similar to the claims made in the client’s patent.
If the client’s patent survives this investigation, then it’s more likely than not that the patent is valid, and will succeed against a legal challenge.
This process requires a great deal of time and research, and typically costs about $4,000, depending on the complexity of the patent.
Demonstrating an act of patent infringement.
The aforementioned 35 U.S. Code § 271 defines a great many actions which qualify as patent infringement. But these mostly boil down to a very simple action: selling a product in the United States which incorporates a patented invention without the authorization to do so.
If a company or individual sells a product on the shelves of Target, lists it on Amazon, sells it via eBay, or makes it available through their own online e-commerce site, this is an act of infringement. As long as they are offering it for sale in the U.S., or bringing the product into the United States, it counts. They don’t even have to make a single sale.
In fact, they don’t have to sell it at all. If you make, use, or even offer to sell a infringing product in the U.S., that constitutes infringement. If you can show that any of the above occurred, then you have demonstrated an act of patent infringement.
Of course, then we have to look at the product itself…
Showing that a product infringes on your patent.
Obviously, in order to seek damages for patent infringement, you have to show that a product has actually infringed on your patent’s claims. The inventor’s testimony that a product is infringing is not sufficient. No matter how well you know your invention and how adamant you are that you recognize your handiwork in an unauthorized product, you need the opinion of an unbiased third party.
In short, to determine if the product is infringing, I have to examine the product. This means purchasing the product and bringing it into my office.
First, I take the inventor’s patent and examine each of the independent claims. I take these elements and turn them into a checklist. Then, I use a dictionary to define as many of the words in the claim as possible. This essentially allows me to greatly expand the depth of detail in the patent claims, much as a diagram of a complicated mechanism will often “explode” it into its component parts so that they can be examined in greater detail. The greater level of detail makes it easier to identify elements of the product that infringe on the patent.
Once I have my expanded description, I take the potentially infringing product and disassemble it. I examine the elements of it that the inventor claims infringes on the patent, and compare it to the detailed description I have created.
If I can show that each major element of a patent claim is present in the unauthorized product, then a substantive argument can be made that the product infringes upon the patent. If the inventor wishes to pursue prosecution, we can then take my analysis (which typically costs about $3,000) and use it as the basis for a patent infringement complaint.
As should be clear now, this is a difficult and lengthy process which requires the services of an experienced patent lawyer. If you believe that your patent is being infringed upon and require legal assistance, please contact O’Brien Patent Solutions at 916-760-8265, or send us a message using our website’s contact form.