Patent infringement under United States law
Encyclopedia
In the United States
, a patent
provides its proprietor with the right to exclude others from utilizing the invention
claim
ed in that patent. Should a person utilize that invention, without the permission of the patent proprietor, they may infringe
that patent.
More specifically, an infringement may occur where the defendant has made, used, sold, offered to sell, or imported an infringing invention
or its equivalent
.
No infringement action may be started until the patent is issued. However, pre-grant protection is available under (d), which allows a patent owner to obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance. This right to obtain provisional damages requires a patent holder to show that (1) the infringing activities occurred after the publication of the patent application, (2) the patented claims are substantially identical to the claims in the published application, and (3) the infringer had "actual notice" of the published patent application.
(b) creates a type of indirect infringement described as "active inducement of infringement," while (c) creates liability for those who have contributed to the infringement of a patent. Both types of indirect infringement can only occur when there has actually been a direct infringement of the patent. Courts can find that there has been direct infringement, however, merely from circumstantial evidence that there must have been at least one instance where the inducement or contribution resulted in the practice of the patented art.
(b) covers situations where one actively induces the infringement of a patent by encouraging, aiding, or otherwise causing another person or entity to infringe a patent. A potential inducer must actually be aware of the patent and intend for their actions to result in a third party infringing that patent.
(c), or "contributory infringement," is triggered when a seller provides a part or component that, while not itself infringing of any patent, has a particular use as part of some other machine or composition that is covered by a patent. If there are other valid uses for the product, however, or it is "a staple article or commodity of commerce suitable for substantial noninfringing use," the seller has likely not contributed to a third party's infringement under (c).
defense to infringement.
Research for "purely philosophical" inquiry is not an infringement, but research directed to commercial purposes is - unless the research is directed toward obtaining approval of the Food and Drug Administration
(FDA) for introduction of a generic version of a patented drug (see Research exemption
and Hatch-Waxman Act).
If an infringer is found to have deliberately infringed a patent (i.e. "willful" infringement), then punitive damages can be assessed up to three times the actual damages. Legal fees can also be assessed.
An infringer can also be enjoined from further infringement of the patent, even to the point of being forced to remove an infringing product from the market.
Until the 2006 Supreme Court case of eBay v. MercExchange, plaintiffs routinely sought, and were granted, injunctions prohibiting infringement of their patents. After 2006, injunctions were much harder to obtain, leaving plaintiffs to pursue remedies only for damages. Because patents last for many years, it is common for lawsuits to conclude before the patent term has ended. This has opened up the question of whether and to what extent a court should craft a remedy that includes a royalty for infringing activity that has not yet occurred, but which likely will occur in the immediate future if the infringer continues his infringing activity. According to a 2009 article in the Federal Lawyer, courts have been willing to grant such remedies in appropriate cases.
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
provides its proprietor with the right to exclude others from utilizing the invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed in that patent. Should a person utilize that invention, without the permission of the patent proprietor, they may infringe
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
that patent.
More specifically, an infringement may occur where the defendant has made, used, sold, offered to sell, or imported an infringing invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
or its equivalent
Doctrine of equivalents
The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed...
.
No infringement action may be started until the patent is issued. However, pre-grant protection is available under (d), which allows a patent owner to obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance. This right to obtain provisional damages requires a patent holder to show that (1) the infringing activities occurred after the publication of the patent application, (2) the patented claims are substantially identical to the claims in the published application, and (3) the infringer had "actual notice" of the published patent application.
Direct infringement
A person directly infringes a patent by making, using, offering to sell, selling, or importing into the US any patented invention, without authority, during the term of the patent.Indirect infringement
While the United States Patent Act does not directly distinguish "direct" and "indirect" infringement, it has become customary to refer to describe infringement under (a) as direct infringement, while grouping (b) and (c) together as "indirect" ways of infringing a patent. Unlike direct infringement, which does not require knowledge of the patent or any intent to infringe, indirect infringement can only arise when the accused indirect infringer has at least some knowledge and intent regarding the patent and the infringement.(b) creates a type of indirect infringement described as "active inducement of infringement," while (c) creates liability for those who have contributed to the infringement of a patent. Both types of indirect infringement can only occur when there has actually been a direct infringement of the patent. Courts can find that there has been direct infringement, however, merely from circumstantial evidence that there must have been at least one instance where the inducement or contribution resulted in the practice of the patented art.
(b) covers situations where one actively induces the infringement of a patent by encouraging, aiding, or otherwise causing another person or entity to infringe a patent. A potential inducer must actually be aware of the patent and intend for their actions to result in a third party infringing that patent.
(c), or "contributory infringement," is triggered when a seller provides a part or component that, while not itself infringing of any patent, has a particular use as part of some other machine or composition that is covered by a patent. If there are other valid uses for the product, however, or it is "a staple article or commodity of commerce suitable for substantial noninfringing use," the seller has likely not contributed to a third party's infringement under (c).
Defenses
The single most common defense to patent infringement is a counter-attack on the patent itself, i.e., the validity of the patent and the allegedly infringed claims. Even if the patent is valid, the plaintiff must still prove that every element of at least one claim was infringed. In case of a medical procedure patent issued after 1996, a U.S. infringer may also raise a statutory safe harborResearch exemption
In patent law, the research exemption or safe harbour exemption is an exemption to the rights conferred by patents, which is especially relevant to drugs...
defense to infringement.
Research for "purely philosophical" inquiry is not an infringement, but research directed to commercial purposes is - unless the research is directed toward obtaining approval of the Food and Drug Administration
Food and Drug Administration
The Food and Drug Administration is an agency of the United States Department of Health and Human Services, one of the United States federal executive departments...
(FDA) for introduction of a generic version of a patented drug (see Research exemption
Research exemption
In patent law, the research exemption or safe harbour exemption is an exemption to the rights conferred by patents, which is especially relevant to drugs...
and Hatch-Waxman Act).
Remedies
Under US law, a patent owner is entitled to the larger of either a reasonable royalty or lost profits that result from infringement of their patent. Reasonableness is determined by the standard practices of the particular industry that the invention is in. Lost profits are determined by a "but for" analysis. (e.g. "My client would have made X dollars in profit but for the infringement of his/her patent.")If an infringer is found to have deliberately infringed a patent (i.e. "willful" infringement), then punitive damages can be assessed up to three times the actual damages. Legal fees can also be assessed.
An infringer can also be enjoined from further infringement of the patent, even to the point of being forced to remove an infringing product from the market.
Until the 2006 Supreme Court case of eBay v. MercExchange, plaintiffs routinely sought, and were granted, injunctions prohibiting infringement of their patents. After 2006, injunctions were much harder to obtain, leaving plaintiffs to pursue remedies only for damages. Because patents last for many years, it is common for lawsuits to conclude before the patent term has ended. This has opened up the question of whether and to what extent a court should craft a remedy that includes a royalty for infringing activity that has not yet occurred, but which likely will occur in the immediate future if the infringer continues his infringing activity. According to a 2009 article in the Federal Lawyer, courts have been willing to grant such remedies in appropriate cases.
See also
See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications.- Anton Piller orderAnton Piller orderIn English and English-derived legal systems, an Anton Piller order is a court order that provides the right to search premises and seize evidence without prior warning...
(common procedure in certain countries to obtain proofs of infringement) - Cease and desist orderCease and desistA cease and desist is an order or request to halt an activity and not to take it up again later or else face legal action. The recipient of the cease-and-desist may be an individual or an organization....
- Industrial espionageIndustrial espionageIndustrial espionage, economic espionage or corporate espionage is a form of espionage conducted for commercial purposes instead of purely national security purposes...
- Inequitable conductInequitable conductIn United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
- Patent retaliation (clause)
- Patent trollPatent trollPatent troll is a pejorative but questioned term used for a person or company who is a non-practicing inventor, and buys and enforces patents against one or more alleged infringers in a manner considered by the target or observers as unduly aggressive or opportunistic, often with no intention to...
- Patent prosecutionPatent prosecutionPatent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
- Software hoarding
- Copyright infringementCopyright infringementCopyright infringement is the unauthorized or prohibited use of works under copyright, infringing the copyright holder's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.- "Piracy" :...
- Trademark infringementTrademark infringementTrademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...