What is Patent Infringement, and What Do I Do When It’s Occurred?

An inventor can claim patent rights over her creation or invention (“invention”). The process for claiming patent rights includes filing for protection with the United States Patent and Trademark Office (USPTO).

There are three types of patents. The first is a utility patent. This concerns a process, machine, article of manufacture, or composition of matter. The invention may have any number of claimed elements that are subject to patent protection. A plant patent is a similar type of protection for new genetic combinations of asexually produced plants. Lastly, a design patent is the aesthetic or ornamental characteristics of an article of manufacture.

Patent rights in any of these categories prevents third parties from copying your invention or design for commercial purposes. This is known as “infringement”. This begs the question of what should you do if you discover that a third party is infringing upon your patent rights.

What to Do if You Believe Someone is Infringing Upon Your Patent

First, you need to decide whether you want to hire an attorney to help you enforce your rights. Hiring an attorney is a very expensive proposition. Unlike other forms of litigation, it is less likely a plaintiff’s attorney will be willing to take the case on a contingency basis. (Contingency means that the attorney takes a percentage of the case winnings.). The reason is because of the difficulty involved in fully litigating a patent infringement case. As such, be prepared to spend tens to hundreds of thousands of dollars on the case. Of course, if you win the case, you may be able to recover these costs from the other side. If you hire an attorney, she will handle the matters from here. If you do it yourself, here are the steps to follow.

Next, send a cease and desist letter. This letter will alert the alleged infringer that you believe she is infringing upon your patent rights and to stop.

If the infringer does not stop (or does stop and you want to pursue damages you suffered) you will need to file a federal civil action (lawsuit) against her. This means filing a complaint with the federal court located in the jurisdiction where the infringer is headquartered or where the infringement took or is taking place. Note, the statute of limitations to enforce patent rights against infringement is six years from the date of the first infringement.

In the pleadings, you will need to lay out the elements of infringement. These are the facts that you must prove at trial to be successful on the infringement claim.

• One of the defendants used or employed the claimed elements of your patent application commercially. This might include making, using, selling, or importing a product that infringes upon the patented holder’s rights.

• You will need to show that each named defendant is an infringer. Types of infringement include:

⁃ Direct infringement. This is when a defendant uses any of the claimed elements of the patented invention without the patent holder's permission. A directing infringer does not have to know that the use violates someone else’s patent.

⁃ Indirect infringement. This occurs when an individual encouraged or aided in the infringing of a patent.

⁃ Induced infringement. This occurs when an individual persuades or otherwise induces a third party to manufacturer or produce a product that infringes upon the patent. In this way, outsourcing production to third parties does not help.

⁃ Contributory infringement. This means contributing toward the infringement by producing a product that allows for the infringement. This normally arises when making a product that has no other use but allowing infringement upon another’s patent.

• Once the type of infringement is laid out against the defendant, there are two additional categories of infringement that are particularly egregious.

⁃ Literal infringement. This means that every elements of the defendant’s invention must be included in the patent. This arises in complete copies of an inventor’s product.

⁃ Willful infringement. Willful infringement is when the defendant was aware of the patented invention and intentionally copied and used it commercially.

• Yet another method of showing infringement is through the doctrine of equivalents. This occurs when the infringer produces a product that does the same thing, in the same way, with the same result. Basically, this cause of action prohibits knock-offs with slight modifications used to skirt the patent laws.

Showing infringement can be the most difficult aspect of the case. This will require going further than simply presenting the claimed present in the patent and the alleged infringing product. The plaintiff will need to employ the specifications, drawings, and additional explanations of how the claimed invention is employed.
• Lastly, the plaintiff will ask for some sort of remedy for the infringement. Remedies may include:
⁃ Injunction - Asking for an court order for the infringer to stop using or selling the covered property. At the beginning of the action, the plaintiff will ask for a temporary injunction. If she prevails, the court will always order a permanent injunction. This requires a showing that:
⁃ Public interest will not be negatively affected if the injunction is granted.
⁃ There is high merit to the case, which is likely to result in success.
⁃ There can be additional hardship to the patent holder if the party infringing is allowed to continue use during the litigation proceedings.
⁃ Monetary Damages - while others seek damages for the unauthorized use that occurred. These might include:
⁃ actual damages include profits lost as a result of the infringement,
⁃ reasonable royalties from the sale of the product, or
⁃ both. The actual damages are the profits that the patent holder lost to the infringer.
⁃ Costs - The plaintiff may sue for her costs in bringing the action, including: court fees, filing fees, and attorney’s fees.

Of course, the defendant will seek to establish defenses against the infringement. A defense generally involves showing that the plaintiff’s patent is invalid. A patent may be invalid because:
• The patent holder was dishonest on the application
• The patent holder included wrong or misleading information on the patent
• A person used the patented item or idea for illegal activity
• The patent violates antitrust and other competition laws
• It did not meet novelty and non-obvious requirements

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