Patent infringement under United States law

In the United States, a patent provides its proprietor with the right to exclude others from utilizing the invention claimed 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. [ (U.S. specific citation) “ [F] or a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device.” Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994)]

No infringement action may be started until the patent is issued. However, pre-grant protection is available under usc|35|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.

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. [ [http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_271.htm#usc35s271 35 U.S.C. 271 - Infringement of 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 usc|35|271(a) as direct infringement, while grouping usc|35|271(b) and usc|35|271(c) together as "indirect" ways of infringing a patent.5-17 Chisum on Patents § 17.01] 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.

usc|35|271(b) creates a type of indirect infringement described as "active inducement of infringement," while usc|35|271(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. [Nordberg Mfg. Co. v. Jackson Vibrators, Inc. (1967)] . 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. [5-17 Chisum on Patents § 17.04]

usc|35|271(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.

usc|35|271(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 usc|35|271(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 and that such infringement caused some sort of damage. In case of a medical procedure patent issued after 1996, a U.S. infringer may also raise a statutory safe harbor 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).

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.

References

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 order (common procedure in certain countries to obtain proofs of infringement)
* Cease and desist order
* Industrial espionage
* Inequitable conduct
* Patent retaliation (clause)
* Patent troll
* Patent prosecution
* Software hoarding

* Copyright infringement
* Trademark infringement