If you are seeking a patent attorney‚ we can assist you. This page is divided into three sections, patent registration, patent infringement, and patent litigation. Please also feel free to contact us for a consultation.
Patents protect processes, methods, machines, and other inventions. They give the inventor a monopoly on the patented item, in that the owner of a patent may exclude others from using, making, or selling the patented invention. This patent protection monopoly lasts for a statutory period of 20 years in the case of utility patents. This period is a balance struck between allowing the owner to profit from the expense of developing the invention and allowing other inventors or creators to build off of old patents that lose their statutory protection.
What is a Patent?
The first step in seeking patent protection is to determine whether your invention is patentable, and into which category your invention falls. There are a number of regulatory and statutory requirements that must be met for an invention to be patentable.
Specifically, it must be:
- A process, machine, articles of manufacture, or composition
- New or novel,
- Useful, and
Each of these requirements must be met in order for an invention to be patented. In order to meet the “novelty” requirement, in the U.S. a patent application must be filed within one year from the time the invention is available for public consumption. Regardless, we recommend that a patent application be filed immediately and prior to any disclosure. A patent can be a completely new invention, or it can be a novel improvement on or change to an existing invention.
To meet the “useful” requirement, the invention must serve some function such as solving a real problem. Finally, to be “non-obvious,” an invention must be something that a reasonably skilled person in the particular discipline would not consider to be obvious.
Types of Patents
There are three different types of patents:
- Utility patents are granted for machines, processes, manufactured goods, and compositions. They protect the functional aspect of the invention.
- Design patents are granted for new, original, and ornamental designs. They protect the ornamental aspect, not the functional aspect of the invention.
- Plant patents are for invention or discovery of new variety of plants.
Utility patents are by far the most common type of patent. In the last year with available data, nearly 590,000 utility patent applications were filed, representing more than 93% of the nearly 630,000 total applications that year. The 39,000 design patent applications represented just over 6% of patent applications, and plant patent applications, with 1,140 applications, comprised less than 1% of applications.
These percentages held true for patent grants, as well. Of the 325,000 patents granted the same year, 298,000 (nearly 92%) were utility patents, 26,000 (8%) were design patents, and 1,074 (0.3%) were for plant patents.
There are two subcategories of utility patents — process patents and machine patents. Process patents give manufacturers the exclusive use of a particular manufacturing process. They also include business processes, which are methods for commercial transactions, such as Amazon’s “One-Click” online ordering. On the other hand, machine patents are for devices that perform tasks, such as a vacuum cleaner or dishwasher.
The U.S. follows a “first to file” rule when granting patent rights. This means that if inventors drag their feet in applying for patent protection, someone else may file first and prevent the inventor from utilizing the invention. Because of the “first to file” rule, it is important to work with your patent attorneys as soon as possible during the invention and patenting process.
Conducting a Patent Search
The first step an inventor should take when it comes to protecting a patent is a patent search. There is no exact formula for conducting a patent search. Instead, this process is a bit of an art and a science. Conducting a patent search involves searching databases containing patent registrations and reviewing what elements on similar patents are claimed as exclusive to the patent owner. We use a vendor that performs the actual search.
Benefits of a patent search include:
- Learning about “prior art” (previous patent applications);
- Determining whether a similar invention already enjoys patent protection;
- Improving your patent application by drafting it in a way to avoid potential infringement claims;
- Avoiding filing an application on an invention that is already patented.
Patent searches are not a requirement to filing an application and are not 100% effective at determining whether your patent rights are cleared. However, they can be highly informative because they give an overview of existing patents, which allows inventors to know where there is room for new creations. After you have completed the preliminary steps of conducting a patent search and researching whether your invention potentially infringes upon an existing patent, you should file your patent application as soon as possible, due to the first-to-file requirements in the U.S.
A patent application contains:
- The Abstract
- The Specification
- The Claims
- The Drawings (if appropriate)
- A Declaration; and
- The government filing fee.
The abstract provides a summary of the invention, while the specification acts as the “recipe” for the invention. Someone with knowledge of the field should be able to recreate the invention based solely on the written description in the specification. The specification will also include a description of all relevant prior inventions, as well as any problems that your invention solves.
The drawings are necessary to include if they show how the invention works. They must illustrate every aspect listed in the claims.
The claims are considered the most important part of the patent because they discuss what your patent covers and define the scope of your patent rights. It is essential to draft the claims in a way that limits your patent so that it does not encompass prior art, while also making it as broad as possible to make the patent as valuable as it can be.
After you submit your application, the Patent Examiner will work through the paperwork to ensure that the invention meets the requirements for patentability, and that the application follows the required format. It is common for the patent application to involve an ongoing dialogue between the Patent Examiner and the inventor.
During this process which usually includes one or more office actions, the Examiner and the inventor will come to an agreement as to what portions of the invention the patent will cover.
Patent infringement occurs when someone makes, uses, or sells a product or service that uses a patented invention. Infringement can be unintentional and intentional, otherwise known as willful infringement.
A company can create and market a product that is protected by another company’s patent without realizing it is protected by patent rights.
This is an area in which patent law differs from copyright law. Under copyright law, Adam and Betty can stand side by side and take the same photograph of the same swan, but have separate copyrights on their individual photographs. Under patent law, however, if Adam and Betty separately invent the same frictionless suitcase wheel and Adam receives patent protection and Betty does not, Betty can be found liable for patent infringement.
Willful patent infringement occurs when a business knows about a patent and proceeds with the infringing activity anyway. In our scenario above, if Betty conducted a patent search that unearthed Adam’s patent, but decided to proceed with sales anyway, she could be found liable for willful patent infringement.
A determination that infringement was willful can lead to enhanced patent damages that can be valued at millions of dollars. Because of this potential risk, companies will often take steps to document their understanding of potential competing patents before pouring money into research and development, marketing, and seeking patent protection on a particular invention.
Elements of a Patent Infringement Case
In analyzing infringement cases, two things must be done.
- First, the scope and meaning of the claims and limitations of the patent at issue must be determined. What elements of the patent are specifically protected?
- Second, the original patent and the potentially infringing device must be compared to determine if each element of at least one claim is present. The patent holder must prove that each element of a patent claim is present in order to be successful in an infringement case. If even one element of a claim is not present, the plaintiff cannot succeed on an infringement claim.
In patent infringement claims, it is often the case that the allegedly infringing device is not exactly the same as the claims of the patent. In these situations, the doctrine of equivalents comes into play. Specifically, if the individual claim elements and the infringing invention are sufficiently equivalent in what they do and how they do it, then infringement can be found.
The burden is on the plaintiff to prove by a preponderance of the evidence that the defendant infringed upon the invention.
Protecting Your Patent from Infringement
If someone is infringing your patent, you can enforce your patent rights both in and out of court. Attempting to resolve infringement matters outside of court does not preclude filing an infringement lawsuit at a later date. Likewise, moving into the litigation phase does not prohibit future settlement negotiations.
In fact, the vast majority of intellectual property disputes settle outside of court, as a sheer matter of practicality from both sides. Even if both parties are unable to come to an agreement before litigation commences, settlement discussions can still continue during the litigation process.
Cease and Desist Letters
If you believe someone is infringing your patent rights, a first step is often to send a cease and desist letter to the infringing party.
These letters will:
- Lay out your patent rights;
- Explain how the other invention infringes on your rights;
- Put the other party on notice that there is a potential patent infringement case;
- Ask the other party to immediately stop making, selling, or distributing the product;
- Ask the other party to demonstrate compliance with this demand within 10 days;
- Explain steps that will be taken – typically proceeding to litigation – if these demands are not met.
Additionally, a cease and desist letter may:
- Ask the other party to enter into a license agreement;
- Depending on the severity of the infringement, demand payment from the infringer in order to release them from legal claims.
The goal of a cease and desist letter is to resolve patent infringement matters in a timely and cost-efficient manner outside of court.
Arguing Against Cease and Desist Letters
If you have received a cease and desist letter, you should not panic. Instead, you should have a patent attorney conduct some research into:
- The merits and content of the letter: Is the patent valid, and does the author of the letter have authority to enforce the patent?
- The letter writer: Does this person, company, or law firm have a reputation for aggressive litigious behavior?
- Your use: Does the other side have a legitimate patent claim against you?
Some people may also decide to change their product, to the extent they are able, in order to avoid future claims of infringement. At times small changes that do not affect sales can resolve the matter. Others may decide to either assert a defense against infringement allegations, showing that the two patents are significantly different enough that one can not infringe upon the other.
You may also be able to negotiate a release of infringement claims by paying some sort of settlement or licensing agreement. You may also discover that the plaintiff is all bark and no bite – that they do not have the inclination or resources to litigate.
If settlement negotiations outside of court fail, the next step in protecting your patent rights will be filing a complaint in court, which initiates the litigation process.
The complaint will lay out the plaintiff’s claim to the patent, as well as facts demonstrating the defendant’s actions infringing the plaintiff’s patent rights. The plaintiff will also ask the court for relief, which can include monetary damages as well as an injunction from continued infringement of the plaintiff’s patent.
The plaintiff must serve the defendant with a copy of the summons and complaint. After the defendant has been served, they must file an answer within 21 days, or the plaintiff can obtain a default judgment.
At this stage, the defendant can file a motion to dismiss if some portion of the complaint is defective. A motion based on a failure to state a claim or for improper venue may be possible. Otherwise, the case will move into the discovery period.
Discovery is an incredibly important part of the litigation process. When the parties are in discovery, they will seek information from each other related to:
- Internal communications, memos, and meetings regarding the alleged infringing activity
- Financial information regarding profits and expenditures on the product
- Submissions to regulatory bodies regarding the product, such as statements made to the FDA or Patent Office; and
- Samples and testing of the product, among other items.
This information can be gathered in a number of ways:
- Document requests;
- Interrogatories, where the parties will ask each other written questions;
- Requests for Admission; and
- Depositions, where witnesses are questioned under oath by both attorneys, and answers are recorded by a court reporter. The parties may seek depositions from each other regarding the creation, sales, marketing, and distribution of the two inventions in question. The parties may also look for expert witnesses to provide testimony regarding the allegedly infringing item.
Discovery takes place outside of court, but discovery disputes may lead to the judge being called to referee. Parties cannot seek indefinite discovery. Instead, the judge will typically set a time period of a few months in which to complete discovery.
During discovery, new information may come to light that may lead the parties to add, drop, or amend one or more of their claims.
Summary Judgment and Trial
Once discovery is complete, the parties may file a summary judgment motion arguing that there are no questions of fact that require a jury to decide. If the judge does not grant summary judgment, the lawsuit can move into the trial stage, where the parties will present their respective cases in front of a judge and jury, who will eventually provide a decision regarding the plaintiff’s claims and the defendant’s affirmative defenses.
Patent Infringement Damages
Unlike copyright and trademark law, which allow plaintiffs to seek statutory damages, patent law requires plaintiffs to prove their damages. If plaintiffs are successful in proving their claims, they can seek one of two types of damages — lost profits or reasonable royalties.
Plaintiffs may also seek a patent injunction to prevent the defendant from further infringing activities.
If the plaintiff can prove lost profits due to the defendant’s infringement, it can recover them. This option is typically preferred because it allows plaintiffs to recover more money. However, it can be difficult for plaintiffs to meet their burden of proof.
In order to recover lost profits, a plaintiff must show that they lost sales due to the defendant’s infringement by demonstrating:
- The demand for the product,
- The lack of alternatives available to the public,
- Plaintiff’s ability to meet public demand, and
- The profit the plaintiff would have made but for the defendant’s infringing activities.
Because of this standard, in order to be eligible to receive lost profits, a plaintiff must either manufacture or sell products protected by the patent. Plaintiffs may also attempt to recover future lost profits and damage to their reputation.
If plaintiffs are unsuccessful in proving lost profits, they may seek reasonable royalties from the defendant. To recover reasonable royalties, plaintiffs must provide an approximation of lost profits, rather than provide detailed financial analysis.
Courts consider a number of factors when determining reasonable royalties, including:
- The value of previous licensing agreements for the patent
- The value of the product itself, including how popular it is and what profits plaintiffs receive from it
- Profits the defendants receive due to their infringing activity, as well as how much the defendant used the infringing product.
This is an area in which the parties may seek testimony from experts in order to determine what a reasonable fee would be if the defendant had properly licensed the plaintiff’s patent.
In addition to receiving either reasonable royalties or lost profits, plaintiffs are sometimes eligible to receive additional damages.
If a plaintiff can show that the defendant’s infringement was willful, the plaintiff can receive enhanced damages, up to three times the infringement amount. Often, the determination of willfulness will center around what the defendant knew about the plaintiff’s patent, and when they knew it.
This is another area in which discovery of internal memos and communications from previous years can be extremely important, as these documents can demonstrate the defendant’s mindset and knowledge basis at earlier dates.
The prevailing party may also seek attorney’s fees and costs, but these are not automatically given as part of the monetary award. Instead, the judge will decide if these should be granted on a case-by-case basis and attorneys fees are generally only awarded in exceptional cases.
Equitable Relief: Injunctions
A plaintiff must bring a patent infringement case within six years in order to recover damages. However, even if a plaintiff fails to file a lawsuit within the statute of limitations, they can still seek equitable relief in the form of an injunction, preventing the defendant from utilizing the patent in the future.
Defenses to a Patent Lawsuit
If you are facing a patent infringement lawsuit, there are a number of affirmative defenses that can be raised.
First, you can argue that the plaintiff’s patent is invalid because it does not meet the statutory requirements to be a patent. If a defendant can show that a patent is not novel, useful, or non-obvious, the patent may be ruled invalid. If a judge rules that the patent whose rights are being enforced is not a valid patent, then the plaintiff cannot attempt to enforce these rights in litigation.
As a defendant, you could show that the patent owner withheld information from the patent examiner that would have rendered a different decision. Proof of withholding may be discovered during the discovery process, when the parties request documents from and ask questions to the other side.
Second, you can argue that there is no infringement by showing that all elements of the patent claims are not present in your product.
Third, a defendant can argue that the plaintiff should be estopped from asserting rights in a patent that were disclaimed in the initial application. Specifically, if the plaintiff told the patent examiner that it was seeking protection on a water bottle, but specifically not seeking protection on a water bottle lid, the plaintiff cannot later claim that the defendant infringed rights on the water bottle lid.
Fourth, plaintiffs cannot assert patent rights against someone who repairs or replaces a non-patented portion of a patented item. For example, if the design of a lamp is patented, but not the cord, repairmen can replace the cord without risk of an infringement claim.
Fifth, the first sale doctrine means that a patent holder cannot prohibit or govern sales of their inventions after the first sale.
Finally, you can present affirmative defenses that are applicable to all forms of litigation. For example, you may argue that the statute of limitations has run on the plaintiff’s claim. In the U.S., a plaintiff must bring a lawsuit within six years of infringement occurring in order to recover monetary damages against the defendant. The case must also be filed in the proper jurisdiction – if someone only sells products in California, they likely cannot be sued in New York. Additionally, if the plaintiff fails to prove every element of their claim, it may be dismissed.
Prevalence of Patent Litigation
Although patent litigation has declined in recent years, the number of patent filings has risen significantly over the past three decades. 2013 represented the high point in this trend, with 6,114 patent cases filed.
It is important to note that about 90% of cases every year are either abandoned or settled outside of court. Of the 10% that have a decision, approximately 7% are decided on summary judgment motions, meaning that there are no issues of fact for a jury to decide. As a result, in any given year, there are approximately 100 patent infringement cases that make it to trial.
Patent Lawyers – Mandour & Associates
Our patent attorneys are highly experienced professionals in all areas of patent law including infringements and litigation. We have offices located throughout southern California in Los Angeles‚ Orange County‚ and San Diego. If you are located outside southern California we are happy to assist. We serve a national and international client base. We look forward to serving you.
If you have a patent issue‚ please feel free to contact us at any time for a free initial consultation.