Patent infringement

Patent infringement | Patent Basics

Your patent has finally issued… Now what?

Unlike other types of Intellectual Property (“IP”) that give you rights, such as the right to use or reproduce the property, patents act as a “negative” right.  A patent does not give you the right to make the patented invention or run the patented process, but instead, allows you to prevent others from doing so.  However, preventing others from infringing on your patent right (such as filing a lawsuit or sending a cease and desist letter) is not required as a condition of patent ownership (unlike with Trademarks).

For another use to infringe on your patent, the other use must meet (or exceed) every aspect of at least one independent claim.  Independent claims are claims that do not refer to another claim in your patent application.  Claims that include language that incorporate another claim are considered dependent claims and are generally unnecessary to consider for patent infringement purposes.

How to Handle the patent Infringement

Patent infringement may be approached in many ways.  While patent infringement lawsuits may be effective, this option is a time consuming and costly process.  The average patent infringement case costs around $1 million and lasts several years. As a result, lawsuits are generally a last resort option for instances of patent infringement.

Once you discover infringement of your patent, you may instead choose to reach out to the infringer.  A simple phone call to the infringer could resolve outlying infringement issues.  You may also choose to send a Demand Letter requesting the removal or termination of all infringing uses. 

Online patent infringement

In the late 1990s, Amazon patented its 1-click purchasing feature.  The feature was such a gamechanger in the field of e-commerce (which was relatively new at this point), that its competitor, Barnes & Noble, decided to use the same feature on its website.  Amazon subsequently sued Barnes & Noble for patent infringement and the two companies settled three years later in favor of Amazon.

In instances where the infringement takes place online, you may issue a takedown notice through the relevant channels.  Products on Amazon may be removed with as little as a few clicks of the mouse, while others may require formal letters or multiple back-and-forths to attempt a takedown that may or may not be successful.

Patent licensing

Another option for infringement may be to license your patent to the infringer.  In this case, you may execute a licensing agreement with the infringer, allowing them to use the patent.  You may limit the scope of the license, permitting the use to only apply to a specific geographic region, selling on a specific website, or only permitting use of one of several aspects.  In return, you may request some compensation.  For example, you may execute a one-year licensing agreement for $10,000.

During the turn of the millennia when Amazon was in the litigation dispute with Barnes & Noble, Apple licensed the exact feature from Amazon.  The license permitted Apple to use the 1-click purchasing feature on iTunes.  This feature stored billing and shipping information so that it did not have to be re-entered upon each new song purchase.

Be careful not to over-step

Regardless of which route you choose to take, it is important to make sure you act within your rights and only go after products or processes that are actually infringing on your patent rights.  False or fraudulent claims of infringement may result in penalties as severe as the loss of your patent or large monetary penalties.

One of the most important concepts to understand with patent law is that the U.S. is a first to file jurisdiction.  This means that even if you came up with an invention twenty years ago, if someone else files on something similar in 2021, they will have priority over you and may enforce on you as an infringer.  Due to this concept, you may not enforce on others until you have filed in some way (provisional is fine).

This article was prepared and written by Abbie, WD’s IP Magizoologist.  Standard, hopefully familiar-sounding, disclaimer:  Any opinions expressed here are of the writer’s.  Any information provided is for educational or informative purposes only and are not intended as legal advice.