Important Tips on Patent Infringement -- (back to Intellectual Property index)

Based on a presentation to the Maine Inventors Forum
March 12, 2002, Portland, Maine

by Peter Black, Esq.
Verrill & Dana, LLP, Portland, Maine
pblack@verrilldana.com

When someone makes, uses, sells, offers to sell, or imports into the United States some thing that is the same as what you have patented in the U.S., that person is called an "infringer" of your patent rights. Here are some things to think about in advance of getting a patent for your invention, as well as after your patent issues.

1. Obstacles to Enforcement of your Patent Rights

a. A U.S. patent gives you the exclusive right to exclude others from making, using, selling, offering to sell, or importing into the U.S. the matters specifically claimed in your patent. The U.S. government will not enforce your patent for you. If you suspect someone is infringing your rights, it is your responsibility to stop them by "enforcing" your patent.

b. When considering whether to invest the time and money into obtaining a patent, understand the difficulties of enforcement.

c. Technology may advance so quickly that your patent is obsolete by the time it issues (obtaining a patent often takes more than a year or even two years).

d. Patent litigation is complex, expensive, and risky.

e. Large companies often take a hard line with small inventors.

i. Not everyone respects patent rights.
ii. Often, defenses can be asserted based upon interpretation of the patent language or validity of the patent.

f. Designing around a patent is permitted.

g. Damages do not accrue until the accused infringer is put on "notice".

2. Tricky Issues Are Often Overlooked When the Patent is Drafted and Filed

These are issues that often arise in litigation:

a. Get the broadest patent possible: if you decide that a patent is worth getting, make sure that you get the most valuable patent possible, which usually means the broadest coverage (and fewest limitations) possible without reading on prior art.

i. Do not defer too much to your patent attorney's selection of claims, elements and words in the patent application.

ii. As the technical expert, only you can ensure that the claims, elements, and words selected for your patent truly capture the essence of your invention and yet provide the broadest coverage possible.

iii. Scrutinize each and every word when drafting your patent application to ensure that the words truly capture the essence of your invention. Those words should not be susceptible to differing interpretations that could provide defenses to potential infringers. They should not restrict your patent claims to particular embodiments when not absolutely necessary.

iv. Remember that each element in a patent claim reduces the patent's scope, so the fewer elements (i.e. limitations), the better.

v. A good example is Thomas Edison's patent for the phonograph, which was issued in 1878. Claim 1 of his patent was simply "a method . . . for reproducing the human voice or other sounds by causing the sound-vibrations to be recorded . . . and obtaining motion from that record . . . for the reproduction of the sound-vibrations." His second claim was an apparatus with only three basic elements: (1) a diaphram exposed to sound vibrations; (2) a moving surface of yielding material for making marks that correspond to sound vibrations; and (3) a character adapted to use in the reproduction of the sound. Even though the actual phonograph built by Edison had many more components, he did not include them as limitations of his invention, which made it harder to design around his patent.

b. Pay attention to inventorship issues - anyone who makes an "inventive contribution", even a small one, is considered an inventor. Sometimes employees or contractors who assist the main inventor in reducing an idea to practice make such inventive contributions, but are not listed on the patent application.

i. All inventors must be listed on the patent application, and a failure to do so could jeopardize the validity of the patent

ii. Each inventor has an equal and undivided right to the invention, unless otherwise agreed. Consider getting employees and contractors to sign agreements in advance requiring them to assign to you any rights to any patent that might result from their assisting you in reducing your idea to practice.

c. Pay attention to adequate disclosure. Your patent must teach others how to make and use the invention, and also must disclose the best mode of practicing the invention. You cannot conceal the best mode, even if you consider it a trade secret. A patent without adequate disclosure is invalid.