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 licence. 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 (or to 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 the granted patent. In other words, the terms of the claims inform the public of what is not allowed without 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 is prohibited from making, using, selling or importing the patented item, while people in other countries 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 country or region and may have some difference of patentability, so that a granted patent is difficult to enforce worldwide.
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Elements of patent infringement Typically, a party which manufactures, imports, uses, sells, or offers for sale patented technology, 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's product (or method, service, and so on) falls within one or more of the claims of the patent. The process employed involves "reading" a claim onto the technology of interest. If all of the claim's elements are found in the technology, the claim is said to "read on" the technology; if a single element from the claim is missing from the technology, the claim does not literally read on the technology 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 one or 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, rendering the patent invalid or unenforceable; it has obtained a license under the patent;

the patent holder is infringing patent rights belonging to the accused infringing party, and the party may resolve the dispute in settlement or cross-licensing.

Indirect infringement Under certain jurisdictions, there is a particular case of patent infringement called "indirect infringement." Indirect infringement can occur, for instance, when a device is claimed in a patent and a third party supplies a product which can only be reasonably used to make the claimed device. 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 that infringement. Types of "indirect infringement" include "contributory infringement" and "induced infringement." No infringement action may be started until the patent is issued. However, pre-grant protection is available under 35 U.S.C. 154(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. The Patent Reform Act of 2009 will, if enacted, make changes such as tightening the definition of "willful" infringement and limit infringement cases to states where the defendant's business operates. Clearance search, and clearance, validity and enforceability opinions A clearance search, also called freedom-to-operate search or infringement search, is a search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. A clearance search 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 or more 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 one or more patent attorneys as to whether a given product or process infringes the claims of one or more issued patents or pending patent applications. Clearance opinions may be done in combination with a "validity and enforceability" opinion. A validity and enforceability opinion is a legal opinion as to whether a given patent is valid and/or enforceable. In other words, a validity

opinion is a legal opinion or letter in which a patent attorney or patent agent analyzes an issued patent 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 a validity opinion (according to one 2007 survey) is over $15,000, with an infringement analysis adding 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 other defenses 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 infringing a patent. For inventors, patent infringement insurance covers legal costs in case they have to sue an infringer to enforce their patent. For third parties, patent infringement insurance covers their legal costs in case they are sued for patent infringement by an inventor. Patent infringement insurance is generally considered too expensive to be worth it. The premiums 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 in legal 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 one or 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 the patent which can be infringed. For that reason, if an issue of infringement arises, it becomes necessary 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. Every requirement of each claim must be considered to see if each thing set out in the claim also appears in the accused practice. If one or more things set forth in a claim is not present in the practice being reviewed, there is no infringement of that claim. On the other hand, if each thing

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 normally the 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 patent that there is no possibility of infringement. Very often, however, there are some differences, requiring further study. Sometimes, such differences are incorporated into a design after knowledge of a patent in an effort to avoid infringement. Then, the question presented is whether the design is sufficiently different from the patent to be held to be non- infringing. If the design is too close to the patent, it will infringe. If the design is remote enough, it will not infringe. The U.S. Supreme Court has stated: "One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare form of infringement." One reason that literal infringement of a patent is a dull form of infringement is that where the potential infringer knows of the patent and takes steps to avoid infringement by making changes from the exact thing which is disclosed and claimed in the patent. At the same time, the individual may copy as much of the patent as thought possible without becoming liable for infringement. When that happens, the issue raised is whether the accused structure or process is the "equivalent" of what is claimed in the patent. A similar problem can arise where a practice is adopted without knowledge of a patent, and the patent becomes known only after a business commitment 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 the seeming simplicity of this rule, its application to a particular case is often complex. Determination of equivalency frequently involves conflicting opinions of experts and disputes as to scientific or engineering facts. The issue is often resolved by the testimony of expert witnesses and the decision may rest on which of the experts is the more believable. Things which are equivalent for one purpose may not be for other purposes. In one well- known case, the patent included claims for welding rods having a flux containing a major proportion of "alkaline earth metal silicate." The accused welding rods included a flux composed principally of "manganese silicate," which is not an alkaline earth metal silicate. Nevertheless, the accused welding rods were held to infringe because of testimony that manganese and magnesium were similar in many of 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 patent applications are rejected, and the claims are amended with the inclusion of more detailed and restrictive language. If an examiner rejects the claims as unpatentable over the prior art and the claims are amended to read more narrowly to avoid the prior art, the patentee is barred from asserting the claims in the broader sense. Since he or she gave up the broader construction to obtain allowance of the claims, the patentee is not permitted to assert that the broader construction is the equivalent of the claim which was finally allowed. The process of rejection

and amendment followed by allowance is shown by correspondence in the Patent and Trademark Office file. That file history is contained in a heavy paper jacket known as a "file wrapper." As a result, the rejection of a claim followed by a narrowing and more limiting amendment is known as a "file wrapper estoppel." It is also possible for a device to be so far changed in principle from a patented device that it performs the same or a similar function in a substantially different way, even though it falls within the literal words of the claim. This situation can occur when the accused device is so far removed from the invention as disclosed in the patent that it is considered in law to be a different thing entirely. Even if the claims literally read on the thing which is accused, the claims are limited by construction to cover the invention which was disclosed in the patent and to exclude a thing 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 direct infringement, 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 to the European Patent Convention (EPC), the UK follows the Protocol on the Interpretation of Article 69 of the EPC, which requires member states to draw a balance between interpreting patent claims with strict literalism (with the description and drawings only helping resolve ambiguity) and regarding the claims as a mere guideline only.
United States

In the United States, the doctrine of equivalents analysis is applied to individual claim limitations, not to the invention as a whole. One way of determining whether a difference is "insubstantial" or not is called the "triple identity" test. Under the triple-identity test, the difference between the limitation in the accused device and the limitation literally recited in the patent claim may be found to be "insubstantial" if the limitation in the accused device:
1. It performs substantially the same function 2. In substantially the same way 3. To yield substantially the same result

Harmonization attempts
Attempts have been made to harmonize the doctrine of equivalents.

For instance, Article 21(2) of 1991 WIPO's "Basic Proposal for a Treaty Supplementing the Paris 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."