Patent Infringement – Patents

If you have a granted patent, and yet somebody is using your invention, then that person is infringing your patent and you are entitled to take Court action to stop them. Here, we explain exactly what constitutes infringement.Firstly, it is important to understand that patents are territorial rights. A UK patent can be used to prevent infringement only in the United Kingdom. If you wish to protect your invention elsewhere, you will need to file corresponding applications for foreign patents – possibly including applications for regional rights such as a European patent.Acts of Patent infringementSo, assuming that you have a UK patent, or a European patent which is in force in the UK, no other person in the UK may do any of the following without your consent:make, dispose of, offer to dispose of, use, import or keep a patented product;
use a patented process;
offer a patented process for use; or
offer to dispose, dispose, use, import or keep a product obtained directly from a patented process.This list covers essentially all commercial activities relating to a patented product. Obviously, it is an infringement to make or sell the patented product. Perhaps less obviously though, it is also an infringement simply to keep the patented product for a commercial purpose. A competitor cannot therefore stockpile infringing products for sale once a patent lapses.There are a couple of caveats to the above list. Firstly, it is only an infringement to use or offer to use a patented process if the infringer knows that it is an infringement to do so. The infringer cannot however be wilfully blind – if it is obvious that they are infringing a patent then it is unnecessary to prove that the infringer actually knew. The requirement for knowledge does not apply to infringements relating to patented products.For the acts of infringements involving dealing with products obtained directly from a patented process, the process need not have been carried out in the United Kingdom. The actual act of producing the products may not therefore infringe a UK patent, but it would be an infringement to import them into the UK, and it would be a further infringement to do anything else with them once they are there.There are a number of exceptions to infringement, the most important of which is that anything done for private and non-commercial reasons does not infringe. Patents are designed as commercial tools, and are not intended to be enforced against private individuals who are not acting in the course of business. The other exceptions are less widely applicable, relating to, for example, use on ships or aircraft temporarily within the UK, experimental purposes, certain limited use on farms, and health trials.Scope of a granted patentIn order to determine whether a particular act infringes upon a patent, it is of course necessary to consider what the patent actually covers. In many cases it may be very clear that a particular product is covered by a patent, but sometimes the scope of the patent may be more arguable. An attorney can determine whether a particular product falls within the scope of a claim.Resellers and end usersIf a patented product is obtained from a patentee or his licensee in an ordinary sale, there is an implied licence to use or re-sell the product.Contributory infringementA person who supplies means relating to an essential element of a patented invention is himself guilty of infringement, if he knows (or it is obvious) that the means he is supplying are going to be used to put the patented invention into effect in the UK.For example, suppose a chair is patented, and the granted patent requires that the chair has, among other things, legs. A person selling the chair without the legs may be guilty of contributory infringement, because the chair without legs is obviously going to have legs added to it in order to make it usable. Even if the chairs do not get turned into infringing products (perhaps because the patentee intervenes before that can happen), the supplier is still liable as long as constructing infringing chairs was the intention of the recipient, and the supplier knew that. The only way that the supplier would not be liable is if the supplier honestly believed that the recipient planned to export the part-made chairs outside the UK, in which case their construction abroad would not be an infringement.Generally speaking, if the product being supplied has at least one plausible use which does not infringe, the supplier will not be infringing by supplying that product. However, even supplying a staple product may infringe if the supplier induces infringement. For example, supplying some ordinary construction materials together with a set of instructions explaining how to turn the materials into a patented product may be an infringement.For contributory infringement to occur, both the supplier and the recipient must be in the United Kingdom.Remedies for infringementA patentee suffering infringement is entitled to apply to the Court for any of the following:An InjunctionAn injunction is a Court Order preventing the infringer from committing further infringing acts. In recent years the Courts have become increasingly willing to award various types of interim injunctions, to protect patentees while the case is in the process of being decided. In Scotland, an interdict may be awarded, which is essentially the same as an injunction in England and Wales.Delivery upAn order for delivery up requires the infringer to give up all infringing products to the patentee. Alternatively, an order for destruction of infringing products may be obtained.Damages or an account of profitsDamages are calculated based on what the patentee has lost from the infringement. An account of profits on the other hand is calculated based on what the infringer has gained from his infringing acts. The patentee must choose to claim either damages or an account of profits – they cannot get both. Damages is the most usual choice, but an account of profits may be chosen where the infringer has gained much more than the patentee has lost. In addition, calculation of damages is in some cases difficult or impossible, so an account of profits may be a more convenient basis for a claim.Unjustified Threats of InfringementNote that making unjustified threats of proceedings for infringement may lead to the maker of the threats being sued. The right to sue for unjustified threats is not limited to the recipient of the threats. Rather, any person who has been damaged by those threats is entitled to relief. A threat made to a retailer could therefore lead to a claim for damages from the retailer’s supplier.It is therefore very important that threats are only made when the nature of the infringer’s activities is fully understood, and after an analysis of the allegedly infringing product to ensure that it falls within the scope of the granted patent. You should always seek advice from a qualified patent attorney before contacting an alleged infringer.

Should You Patent Your Invention or New Product? – Patents

Before you start manufacturing, you’ll need to create a prototype and then decide if you want to patent your invention or new product.So, as an inventor or designer, it’s important to learn about patenting and prototyping.Allow me to introduce to you Justin Aiello of Aiello Design.In my interview with Justin, we will explore how to do a patent search, the advantages of filing a patent and why you should watch out for invention companies.KI: Can you briefly go through the invention development process?JA:Step 1: US Patent SearchStep 2: Preliminary DesignStep 3: CAD EngineeringStep 4: PrototypeStep 5: Patent ProtectionStep 6: ProductionKI: Are you required to patent an idea? JA: No. But you have to make sure you are not infringing on an active patent or you can be liable for damages.KI: What are the advantages of patenting an idea?JA: It grants the patent holder exclusive rights to the technology for 20 years. A patent is also needed if you plan to license your product.KI: What is a patent search?JA: The process of searching and finding similar patents to help determine your chances of getting a patent.KI: Is it necessary to do a patent search? JA: Most of the time.KI: Where would you suggest starting the patent search process?JA: The United States Patent Office. There is lots of good information on the patent office web site. The site is extremely cluttered and difficult to navigate but good information is there. You just have to find it. The site can be found at http://www.uspto.gov.KI: What would you need in order to file a patent search? JA: A complete description of the proposed invention.KI: What are the advantages of hiring a professional to do a patent search? JA: A professional search should be more comprehensive as they are done by people physically at the patent office as opposed to an online, keyword search.KI: What is a provisional patent application? JA: A 12-month placeholder for a product that will eventually become patented.KI: What are the advantages of filing a provisional application? JA: It’s a low-cost way to start the patent process while inventors explore marketing, sales, production, etc.KI: On average, how much does filing a provision patent cost? JA: $130 assuming you have all the parts of the application.KI: Will a patent avoid infringements from companies, for example, in China and other countries? JA: No. Patents can only be enforced in the country in which it’s filed. If you have a US Patent, the rest of the world can’t sell in the US, but they can sell to the rest of the world.KI: What should one have prepared when starting the development process? JA: A great idea that you believe in and a clear goal of where you want to take it.KI: Is a drawing sufficient to get the prototyping process started? JA: Yes. Drawings and sketches are always great.KI: Do you think an NDA (non-disclosure agreement) is sufficient when working with a development company? JA: Yes.KI: Do you suggest working with a U.S. company v.s. an overseas company when developing prototypes? JA: Overseas is great for manufacturing. The U.S. is still the best place for design, engineering and the overall front-end development.KI: Do you have to use the same factory where you got your prototype produced? What are the advantages if you do? JA: No. Getting low volume prototype parts are made by a different kind of company than one that makes high-volume, mass produced parts. It’s two completely different industries.KI: In your opinion, how viable are invention companies? JA: Invention promotion companies are a waste of money. Invention Development companies, like mine, provide the necessary development needed to take a product from an idea to reality.KI: Aside from patent research, what other type of market research, if any, do you think is necessary prior to developing a product? JA: Find comparable/similar products to help determine the retail price of your product. And run the idea by trusted family and friends.KI: How do you know if a product requires a testing certification? JA: It’s a case by case basis, but again, find comparable/similar products and see what certifications they have.KI: What’s the one thing (most important advice) you’d like to share with inventors as far as the invention development process? JA:- Use the internet and BBB to research invention related companies before working with them. You will find many companies have complaints and pending lawsuits.- Ideas do not have any value until they are patented and developed and Invention Development requires money to get there.Having been in the manufacturing business for many years and working with inventors, product developers and licensors, the answer to whether or not you should patent a product really depends on several factors – the type of product, your business plans and finances and your comfort level. New, novel and innovative products should more likely be patented. Also, as Justin noted earlier, if you plan to only develop a product and then sell or license it, it’s highly advisable that you file a patent for your invention. There are different kinds of patents – utility and design. And remember that ideas are NOT patentable – you can only patent the actual invention.There are many products in the market that do not have patents, but ultimately, you have to feel comfortable with this decision.More importantly is making sure you don’t infringe on an existing patent. Just because it’s not out in the market, that does not mean a patent has not been filed, so make sure you do your research.Working with an invention development company like Justin’s or hiring an attorney are great resources when making this decision.Here’s a link (http://www.wipo.int/patentscope/en/patents_faq.html#why_patents) to another great resource about filing patents from WIPO (World Intellectual Property Organization) that you may want to check out.I personally have not worked with invention promotion companies, but I tend to agree with Justin. I’ve heard that most of them require upfront fees, so as always, be smart, be very cautious and do your homework.