Thousands of Americans own patents issued by the United States Patent Office. Most of these patent owners understand that the most valuable right protected by the patent is the exclusive right to manufacture and sell the patented device. In other words, the patent confers the right to prevent others from manufacturing and selling the same device. Many patent holders, however, do not understand the process of protecting their patents through a patent infringement lawsuit. The process is both complex and lengthy, but a patent owner can be more effective in protecting the invention by obtaining a rudimentary view of the patent infringement enforcement process.
The basics
The first step is obtaining a valid patent. The requisites of a valid patent are set forth in the United States Code. To obtain a patent that relates to the use of a specified device (a “utility” patent), the inventor must prove several facts: first, the device must be a process, machine, manufacture of composition of matter, be useful, be novel, be non-obvious and adhere to the written description of the device. An infringing person must be proved to infringe on the patent owners’ exclusive right to manufacture and sell or offering to sell the device. In order to succeed in an enforcement action, the patent holder must prove the existence of every fact underlying the patent application.
Each of the elements listed above must be present in the patented device. If the accused property had all of the elements of the patented device, it will still be deemed to be infringing even if it has additional features. In the absence of proving literal infringement, the patent owner can still succeed in a patent infringement lawsuit by showing that the alleged infringing product performs substantially the same function in substantially the same way as the patented product.
Defenses to an infringement claim
A person who is alleged to have infringed upon a patent has several defenses. First, the challenged product does not actually infringe upon the patent device. Second, the patent claim is invalid, that is, the owner of the product in question failed to prove that the product was patentable because certain mandatory elements of the requirements of a patent were missing from the original application. An accused infringer can also look to 35 U.S.C. § 271(e)(1), a portion of the U.S. Code that immunizes an accused infringer for activities that were undertaken to submit information to the Food and Drug Administration.
Anyone who is considering bringing a patent infringement claim in Federal Court may wish to consult a knowledgeable patent attorney before beginning that journey. A knowledgeable patent attorney can evaluate the facts relevant to the infringement claim and provide a helpful estimate of the likelihood of prevailing on the claim.