Patentability & Infringement

 

BACKGROUND

Infringement and patentability are complicated issues. For example, a product that infringes a prior patent may still be patentable over that patent. However, an invention that does not infringe any prior patents may not be patentable. Despite their similarities, infringement and patentability are very different issues and must be considered separately.

The "claims" of a patent define the boundaries of the patented invention. A claim may include one or more elements (also referred to as limitations). A patent may include several independent claims, which are the "main" claims that define an invention. Independent claims do not refer to any other claims. A patent may also include dependent claims that refer to one or more claims (e.g. "the device of claim 4"). Dependent claims include all of their own limitations as well as all the limitations in the claim to which they refer. If an independent claim is not infringed, dependent claims that refer back to the noninfringed independent claim are not infringed.

A "broad claim" generally has fewer elements. Because broad claims have fewer elements, they are harder to get through the patent prosecution process (the process of obtaining a patent). However, it is easier to find infringement of broad claims. A "narrow claim" generally has more elements and is easier to get through the patent prosecution process. However, it is harder to find infringement of narrow claims because it is easier to "design around" narrow claims.

 

INFRINGEMENT

Infringement occurs when a patented invention is made, used, offered for sale, sold, or imported into the United States. Only a valid, issued, maintained, and non-expired patent can be infringed.

There are two sides of the infringement issues: whether you would infringe a patent by practicing your invention (e.g. producing a product) and what others would have to do to infringe your patent.

In an infringement analysis, the claims of a patent are reviewed and compared to a particular product (or method). If the product has all the elements set forth in at least one independent claim, then that product would infringe that claim. If a product infringes the claims, then the issue of patent validity (whether the patent being analyzed is valid) should also be reviewed. Infringement should be considered when a product is about to be produced and/or sold.

Infringement should also be kept in mind as the claims are being drafted because the "broader" the claims are drafted, the more likely future competitors are to infringe.

 

What is not infringement?

• Even if an application (provisional or nonprovisional) has been filed and there is "patent pending" status, there can be no infringement until the patent issues.
• A published application provides some provisional rights, but no lawsuits can be brought until the patent issues. Only a "reasonable royalty" may be obtained for "infringement" of a published application – not traditional "damages."
• A patent that has expired or has not been maintained cannot be infringed.
• A patent that is not valid cannot be infringed. If there was fraud in the prosecution of the patent, the entire patent may not be valid. If prior art exists that discloses all of the claimed elements, the patent (or individual claims thereof) may not be valid.
• Making, using, offering to sell, or selling products outside the United States would not be infringement of a United States patent.
• Just because a product is similar does not mean it infringes. The product must have all the elements set forth in at least one independent claim.

 

PATENTABILITY

The issue of patentability has to do with whether at least one claim can be drafted (written) that describes the invention in such a way that there is no prior art that "anticipates" or "makes obvious" the claimed invention. Ideally, claims of varying scope (e.g. broad and narrow) are drafted. During patent prosecution (the process of obtaining a patent), the Examiner compares the claims with "prior art." Narrow claims are more likely to be found patentable (and valid), but are less likely to be infringed. Broad claims are more difficult to obtain because there is more relevant prior art (which may present problems with validity later). However, broad claims are more likely to be found infringed.

Patents are generally available for processes, machines, articles of manufacture, composition of matters, and improvements to any of these. Patents are also available for ornamental designs of an article of manufacture and asexually reproduced plant varieties. To be patentable, however, the invention must be new (not described in a single prior art reference), nonobvious (not described in a combination of prior art references or "obvious to one skilled in the art"), and useful.

In a patentability analysis, the prior art references (which may be, for example, patents, publications, websites, and the acts and disclosures of the applicant or other people) are reviewed and compared to the invention or claims directed to the invention.

 

PRACTICAL ADVICE

Patents are a valuable part of any intellectual property portfolio. Patents, however, have significant limitations. Using other forms of intellectual property protection may help to further protect intellectual property and can (in most cases) be used in combination with patent protection.

• Patent markings should always be used. During prosecution, the products should be marked "Patent Pending." Products should be marked "U.S. Patent No. 9,999,999" after the patent has issued.
• Confidentiality Agreements, Nondisclosure Agreements, and Non-compete Agreements (where allowable) provide rights under contract law. They also help protect foreign rights because a disclosure (even an offer to sell) made under a confidentiality agreement is considered a confidential disclosure and would not be a nonconfidential disclosure that would prevent foreign protection. These agreements may also be helpful in establishing and maintaining trade secrets.
• Trademarks protect the "identification of an idea" or, more accurately, the "identification of the source of the idea." Examples of trademarks are words, phrases, symbols, or designs that identify and distinguish the source of the idea (generally goods or services). A trademark owner may prevent others from using a substantially similar mark for similar types of "ideas" if it is likely to create confusion as to the source. You should properly mark products and materials with ™ (before or during trademark prosecution) and ® after the trademark has been registered.
• A copyright protects the "expression of an idea." Examples of copyrightable material include brochures, proposals, business plans, lists, literature, websites, and software code. A copyright owner can exclude others from reproducing, adapting, publicly distributing, publicly displaying, or performing the copyrighted work and works substantially similar thereto. You should properly mark all copyrightable material with "© 2010 Owner Name."
• Trade secret law can protect any information (e.g., recipe, device, product, pattern, list, plan, or process) that provides a competitive advantage over those not in possession of the trade secret. Although each state has its own trade secret law, as a general rule, information that has commercial value and that has been scrupulously kept confidential will be considered a trade secret. The owner of a trade secret may be entitled to court relief against those who have stolen or divulged it in violation of a duty of trust or a written nondisclosure agreement. Reasonable measures to ensure that the information remains a secret include, for example, placing a written notice on all materials containing trade secret information (e.g. by marking the materials "confidential" and/or "considered a trade secret and protectable as such to the extent permitted by law") and ensuring that the facilities are secure (e.g. public entrances should be monitored, guests should sign in (preferably signing a notice that informs them of their confidentiality obligations), and guests should wear badges that make them easily identifiable to employees). Further, all employees should be required to sign appropriate confidentiality, nondisclosure and/or noncompetition agreements. A written policy on trade secrets should be provided to each employee upon hiring and as the policy is updated. Only employees with appropriate clearances should have access to trade secret information. Exit interviews and termination agreements should be required from employees who had access to trade secrets.