Common Mistakes Companies Make

An individual or a company may file a patent infringement lawsuit if another person or business is using the former's patented intellectual property (IP) without permission. Patent education issues represent one of the most common categories where companies make mistakes. For example, a company might not know enough about patent law to understand exactly the protections its patent affords. The company learns the protection is insufficient when it tries to sue another company for infringement unsuccessfully.

Without an intellectual property management program, it can be difficult to ensure an IP is properly protected. A lack of patent research means a patent application may infringe on patents that exist. Many companies also misunderstand the extent of the patent protection their competitors possess.

Patent Infringement and Litigation

Even if your business owns a patent, you're not completely protected against infringement. The responsibility of responding to infringement lies with the IP owner. Therefore, it's important to monitor the market and litigate potential infringement. Taking legal action will ideally result in an injunction that stops the infringing acts, along with a monetary settlement.

In most cases, if you file an action alleging patent infringement, the defendant will respond by calling the validity of your patent into question. Patents can be found invalid if the invention was not actually novel and the patent was issued by mistake. If this defense is unsuccessful, the court may issue an injunction or award monetary damages to the patent owner. 

The court may also assist the parties in negotiating a licensing agreement where the infringer can use the device if he or she pays royalties in exchange for permission.

Patent Infringement Litigation: The Basics

To be found guilty of patent infringement, an individual or business must use, make, sell, or otherwise profit from a patented item. Patent infringement litigation takes place in federal district court. Patent owners have six years from the date of the alleged infringement to file a lawsuit. Due to the complex legal issues involved in IP, lawsuits can take years to resolve.

Defenses to a Patent Infringement Lawsuit

The primary defense in a patent infringement lawsuit is that the patent in question is not actually novel or nonobvious. Defendants may also claim that the original patent application contained fraudulent information or that the patent in question was created through anticompetitive activities. 

The patent owner is required to prove that his or her patent is valid and that the defendant infringed on the patent, with more evidence required to show infringement than lack thereof.

Different Types of Patent Infringement

Patent infringement can occur in several ways:

  • Direct infringement — manufacturing a patented product without permission from the IP owner.
  • Indirect infringement — encouraging or assisting another in patent infringement.
  • Contributory infringement — the party supplies a direct infringement with a component that has no valid use other than infringement.
  • Literal infringement — there must be a direct relation between the infringing device and the patent application language.

Even when a product does not fall into one of these categories, infringement may have occurred if it performs the same function as the patented product using the same method. This is called the doctrine of equivalents

Utility Patent Infringement

If an item covered by a utility patent is used, manufactured, or sold without the patent owner's permission, the court may order the infringing activity to stop. It may also order monetary damages awarded to the patent owner. The damage amount may be tripled if the court finds that willful infringement happened.

Design Patent Infringement

To prove design patent infringement, the court uses two standards:

  • Ordinary Observer test — an ordinary observer must be able to see the similarities between the infringing design and the design drawn in the patent application.
  • Point of Novelty test — the court determines how novel the patented design is by comparing it with prior art. Then the court determines if the infringing design includes these novel elements.

Willful Infringement

Willful infringement occurs when the individual or business in question knows it is infringing on a patent or continues the infringement action after receiving official notice from the patent owner to stop.

If you need help with a patent infringement lawsuit, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.