Market Monitoring: Watching for Infringers
After getting a patent granted from the government, the next step is enforcing the patent for its active lifetime of 20 years from the filing date (15 years from date of issue for design patents). Generally, it’s not a question of whether a patent is being infringed; it’s a question of how many people are infringing the patent. Although the United States Patent and Trademark Office (USPTO) acts as the gatekeeper to acquiring patent rights, they do not enforce your patent rights for you. You must enforce your patent rights – but you need not do so alone. The patent attorneys at Bold Patents are here to help you assess whether patent infringement is occurring and offer support in enforcing your patent rights. In addition, monitoring the market for potential infringers is a constant job that business owners and inventors simply don’t have the time to do adequately. Thus, hiring a qualified professional to function as the enforcers/protectors of your IP is key.
Internal Check: Make sure Your Patent Claims are Valid First
Before addressing the extent to which a patent may be infringed, it is important to establish that the patent is still valid. For instance, patents from the dot com era directed to the abstract idea of using generic computer implementations to perform fundamental functions, such as software for escrow services, are no longer valid. It’s true, that a patent can get fully granted from the USPTO, and yet invalidated the next year, because the patent laws or specific precedential court cases have changed the interpretation of certain laws. Thus, engaging a patent attorney to assess the specific wording in your claim language against the latest laws is essential. The end product that you will get from your attorney is called a validity opinion, and it is an important step to establish whether your patent is enforceable or whether your product is infringing an enforceable patent.
Types of Infringement
There are various types of infringement: direct and indirect. Indirect infringement can further be classified as induced or contributory. Infringement can also either be literal (infringing product or act reads on the patented claim language) or covered by the Doctrine of Equivalents. The Doctrine of Equivalents can be relied upon to show infringement when the alleged infringing product or act achieves substantially the same result, performs substantially the same function, and operates in substantially the same way. Putting your potential infringers on notice is also a huge tool to use to get extra damages as a Plaintiff. If a defendant is put on notice that you have an enforceable patent right, and they ignore it, treble damages (up to three times actual damages) are available when the patent owner can show that the infringer acted willfully.
Direct infringement is defined by Section 271(a) of the Patent Act (Chapter 35 of the United States Code) states the basic rule of patent infringement: “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” The statute does not require any proof of access to the inventor’s work or any intent to infringe. This means that there is no excuse of “I didn’t know!” or playing dumb. Whether they knew about the underlying patent right or not, is of no use in arguing whether they are liable.
Indirect infringement is also covered under the Patent Act. This means that someone that may only make a component of a flashlight, but not the entire product would not be able to successfully argue that they didn’t infringe, because they only put one part of the flashlight together…and it’s the flashlight that infringes. If the products they are manufacturing, using or selling are covered under the claims, they can be liable for contributory infringement. Another form of indirect infringement is the incentivizing a 3rd party to manufacture or sell goods that they know are covered under a patent right. This is inducement and the party doing the inducing can be found solely liable for the infringement even if they actually didn’t perform any of the making, using, selling or importing activities covered under the Patent Act.
Willful Infringement: Treble Damages
Would-be infringers should be wary of the provision for treble damages when a patentee shows willful infringement. Indeed, the Supreme Court decision in Halo v. Pulse, 136 S.Ct. 1923 (2016) arguably expands the scope of willful infringement to punish “the ‘wanton and malicious pirate’ who intentionally infringes another’s patent—with no doubts about its validity or any notion of a defense—for no purpose other than to steal the patentee’s business.” The court will look at specific activity to see whether they are willing to say it is “willful”:
- whether the infringer deliberately copied the ideas or design of another;
- whether the infringer, when he knew of the other’s patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed;
- infringer’s behavior as a party to the litigation;
- infringer’s size and financial condition;
- closeness of the case;
- duration of infringer’s misconduct;
- remedial action by the infringer;
- infringer’s motivation for harm;
- infringer’s attempt to conceal misconduct.
Under Halo, a preliminary injunction may not be necessary to maintain a claim for willful infringement, but such pre-suit conduct may nonetheless be helpful to remediate ongoing or future infringement.
If you are a patent owner who is concerned about possible infringement, contact us today to schedule a free consultation to discuss your situation and possible remedies. If you are a business owner and are concerned about possibly infringing an existing patent, contact us today to schedule a free consultation to discuss your situation and options moving forward.