1. Willful Infringement: What Is It?
2. Why Is Willful Infringement Important?
3. Reasons to Pursue Willful Infringement and Enhanced Damages
4. How Does Willful Infringement Happen?
5. Frequently Asked Questions

Willful Infringement: What Is It?

Willful infringement is when someone copies a claimed invention and knew the entire time that the invention was patented, thus committing patent infringement. An infringement is considered willful when:

  • A defendant engaged in acts that infringed the patent or copyright
  • The defendant knew those acts were in violation of the patent or copyright. They still acted as if they were ignorant of the law or had reckless regard for the patent or copyright holder's rights

Simply put, anyone who copies an invention after it has been patented on purpose has committed a willful infringement. However, the infringement is not considered willful if:

  • the person has copied the invention without knowing it was patented 
  • the person, in good faith, believes the patent is invalid or no longer applicable

Proving whether the infringement was willful falls to the patent owner. They must come up with supporting evidence for court.

Why Is Willful Infringement Important?

Willful infringement laws help protect patent owners' rights. However, the definition of "willful infringement" has changed over the years.

In 2016, the Supreme Court changed the standard for awarding damages in patent cases in its Halo Electronics, Inc. v. Pulse Electronics, Inc. decision. Previously, the Federal Circuit had an "objective recklessness" standard established in 2007 (Seagate).

Under the Seagate ruling, a patent holder seeking damages had to present convincing and clear evidence of an obvious infringement. During the Halo trial, the jury found it likely that the defendant's infringement was committed on purpose. This happened even though the district court felt otherwise.

The court pointed out that under the Seagate test, many infringers were protected from punishment. This needed to change. With the new Halo rule, the focus turned to "willful misconduct" rather than "objective recklessness." This basically threw out the need for a patent owner to present "clear and convincing evidence" as a standard of proof.

Those accused of infringement need to build a record that they did not act in bad faith. This can include getting an opinion letter from counsel. These letters have become more important for accused infringers than they were in the pre-Halo days. The Halo ruling has helped strengthen patent holders' rights.

Another benefit of the switch to the definition of willful infringement has to do with discouraging "patent trolls." Patent trolls are companies that obtain the rights to patents. They do this through licensing or litigation instead of making their own inventions. The new patent laws are more suited to punishing the full range of guilty behavior, including patent trolling.

Reasons to Pursue Willful Infringement and Enhanced Damages

The United States has essentially made a "pro-patent" decision with the Halo trial. Patent holders can feel more confident in their cases when pursuing more damages. A major benefit of holding a patent for an invention is that you are protected from infringement for 20 years.

This means only you can benefit financially from your invention. If anyone else tries to produce or sell the invention, you can sue them for damages.

Before you accuse someone of copying your idea on purpose, it's important to understand what it means to be willful. Deciding if something was willful is a three-step process:

  • Did the infringer know about the patent when he or she was charged?
  • If the infringer knew about it: did they have a good faith belief that they were not copying an idea?
  • Was the infringer's belief reasonable when you consider the circumstances?

Simply put, someone cannot be charged with patent infringement if he or she didn't know about the patent. 

Unfortunately, the second step is more subjective. If the defendant truly thought they would not get in trouble for infringement, then there is no case. This is where a competent counsel's opinion comes in. This opinion can be either a formal written letter or an oral statement. It is best if these come from:

  • a scientist
  • an engineer
  • a specialized expert of some kind
  • another professional

Timing is also important when you test willful infringement. Opinions given long after the process of taking legal action has started have little value.

Finally, the legal process looks at how reasonable the infringement was. The party's conduct is evaluated. This includes reviewing counsel opinions. If there is enough basis for infringement, the jury will likely blame them.

How Does Willful Infringement Happen?

Willful infringement is a broad term. It includes more than just copying someone else's product on purpose. Usually, willful infringement happens when the product is developed independently by the infringing party. The question is whether this took place after the party learned of the patent or before.

While every case is different, some questions that are typically asked in willful infringement cases include:

  • Did the infringer immediately seek information as to whether the patent was invalid or being infringed? Did the party wait?
  • Was the prior art and the prosecution history reviewed?
  • Was an opinion requested from a patent lawyer, outside counsel, an in-house attorney, or some other person?
  • Did the opinion include detailed reasons supported by facts to justify its conclusions?
  • If the opinion presented a problem, were steps taken to change the patent or product?
  • If infringement was unavoidable, were steps taken to secure a license under patent law?

In general, it is best to do whatever you can to learn about a patent before making something. Putting more work into it makes your infringement less likely to be considered "willful."

The Totality of Circumstances Test

The Federal Circuit abides by what's known as a "totality of circumstances" test for figuring out whether willful infringement of a has patent occurred.

According to the Federal Circuit, once a party receives notice of an inventor's patent rights, he or she has a responsibility to respect those rights and obtain legal counsel for advice. With the "totality of circumstances" test, however, the fact that the party sought the opinion of counsel doesn't necessarily mean the infringement was not willful.

The "totality of circumstances" test states:

  • In circumstances were no legal counsel is obtained, the Federal Circuit splits its decisions regarding willfulness or non-willfulness of patent infringement
  • Where no opinion was received until the suit was filed, such as six months after the patent issue, willful infringement is not found
  • The Federal Circuit has found willful infringement contrary to the internal memorandum of the infringer
  • The court notes willful infringement where there's no basis for the infringer believing the patent was invalid at the time of misuse
  • No willful infringement is found where expert testimony proves serious efforts were made to design around the invention's claims

In cases where the court finds willful infringement despite an opinion of counsel, in most cases, the counsel's advice is either incompetent or ignored altogether. For example, a written opinion can be incompetent merely by presenting statements without discussing facts or offering an in-depth analysis. In many court cases, a finding of willfulness has been upheld where the lawyer's opinion relied on superficial claims, failing to consider other factors such as prior art. 

Frequently Asked Questions

  • What steps can be taken to avoid willful infringement?

It's important to research existing patents and their expiration dates. This is especially true for companies worried about willfully infringing on a patent. The procedure should be in writing in order to provide proof that measures were taken to avoid willful infringement.

  • How do I, as a patent holder, win a willful infringement case?

Proving willful infringement can be difficult, but not impossible. The main tactic is to attack the competency of the counsel's opinion. This should include reviewing its timing. Questionable defense opinions can backfire. This happens especially if the opinion counsel did a poor job of saying it wasn't on purpose.

You might be seeking damages, or perhaps you've been accused of willful infringement. Either way, having an experience intellectual property rights lawyer on your side is essential. Post your legal need to receive free custom quotes from the top 5% of attorneys on UpCounsel's marketplace to get all the information you need to decide how to proceed.