what is patent infringement in US : a short guideline


Patent infringement in US : a short guideline

 

Let’s assume you own a patent for an invention with let’s say very high market value.

You can call you patent has been infringed, When someone making, using, selling, offering for sale or importing the patented invention without your permission (consent). Permission may typically be granted in the form of a license.

In such scenario you a patent owner can sue the infringing party in federal court. And if you can prove the patent has been infringed, the court can order the infringing party to pay the monetary damages and or stop infringement. This is rewarding if you are a patent owner.

If you happened to be on the other side of the infringement, that is if you are the one who is infringing on someone else’s patent, you have an opportunity to prove in the court that the claims of the patent are not valid based on prior arts. For this you need to find prior arts that can convince the court that the claimed invention is indeed known to public and hence cannot be held valid. 

This type of search is performed by patent professionals and attorneys called as “validity search” The aim here would be finding prior arts for the independent claims of the given patent so as to prove claims invalid.

In general the date of publication of prior art cited has to be earlier than 1 year before filing date of the patent application.

Below are common defenses taken for patent infringement lawsuit:

 Patent is not valid as it does not meet patentability criteria’s of

  • Novelty (new) generally anticipated by prior arts

  • Non obviousness (inventive step) generally approach is to prove the patent obvious to a person skilled in the art.

There are 4 types of patent infringements in general,

  • Direct

  • Indirect

  • Contributory and

  • Literal

Direct infringement is when the patented invention is practices for commercial purpose (like manufacturing it) without the consent of patent owner,

Indirect infringement happens when someone encourage or aid other party for infringement of the patent.

Contributory infringement happens when someone supplies parts to the direct infringer provided the parts have no other specific reason than to obtain the patented invention.

Literal infringement happens when there is exact match between invention claimed in the patent (claims) and the product produced by the infringer.

 

What are monetary damages to be paid to the patent owner by infringer?

The damage to be paid to the patent owner defers case to case, However in general the damage could be paid in one time monetary amount or a reasonable royalty payments for the use while infringing on the patent.

 

Prasad Karhad

Prasad Karhad

Registered Patent Agent India at Link to profile
Registered Patent Agent India (IN/PA 2352), Working from 10+ years in Patents field. Bachelors degree in electronics and telecommunication engineering.

Associated with leading Intellectual Property firm in India called Khurana & Khurana, Advocates and IP Attorneys (K&K). With team of 65+ Intellectual property (IP) professionals including patent agents, trademark agents and attorneys and offices at Delhi, Mumbai, Pune and Bangalore, Successfully helping inventors and businesses in securing their Intellectual Property Rights (IPR) including Patents, Trademarks, Designs & Copyrights along with Contract & Commercial Matters.

Founder of Patent in India Platform with more than 11000 visitors every month, Patent in India platform continues to be leading patent consulting platform in India. http://patentinindia.com/
Prasad Karhad

Latest posts by Prasad Karhad (see all)