The grant of a patent entails a negative right. It empowers the patent owner to prevent third parties from making, using, selling, offering for sale or importing the subject matter of the patent and prior consent is required from the patent owner to use the invention. Consent is generally granted in the form of a licence. Any instance of using a patented invention without prior permission will attract provisions elucidating patent infringement.
Intellectual property rights operate territorially; that is, an infringement of a patent can only take place in the territory where it was granted. A key issue in an infringement suit is the scope of patent claims.
Patent claims demarcate the boundary of an invention. The scope and terms of claims define the contours of the patented invention, thereby informing others about what should not be done without prior permission from the patent owner.
The process for establishing patent infringement involves measuring the nature and extent of the overlap between claims of the patented invention and the alleged infringing product. If the claims of the patent are “read on” the alleged infringing product, the product is said to infringe the patented invention. An alleged infringer may defend his action by claiming “invalidity of the patent”.
Defences in infringement suits frequently entail an infringer discharging the burden of proof by citing references destroying the novelty or inventive step in the claims of the patent. The intention of the infringer is immaterial when looking into the causes for infringement. The following steps may be of use while litigating an infringement case.
The first step is to ascertain that the claims of patented invention read on the product(s) of the alleged infringer. Claim charts which are a visual representation used to determine the extent of overlap between claims of a patent and an alleged product, are widely employed for this purpose.
As a general defence strategy, the alleged infringer may come up with relevant references which may invalidate the patent. Thus, it is important to cross check that the alleged infringer is not practising a substitute to the patented invention for the alleged infringing product.
Once the infringement is ascertained and enough evidence has been compiled, a legal notice should be sent to the alleged infringer with the self-explanatory evidence of infringement.
After the infringement has been implicitly or explicitly accepted by the alleged infringer, the patent owner can negotiate on damages or royalties. If the alleged infringer does not agree with the patent owner’s infringement allegation, a patent infringement suit should be filed through an attorney.
Since most patent infringement suits are high on cost and take time to be adjudged by the courts, many corporates, law firms and individual attorneys take the outsourcing route to significantly reduce the costs associated with an infringement lawsuit. Individual patent owners are also turning to outsourcing options to ascertain their claims for patent infringement.
Leading the list of outsourced services is the preparation of claim charts as a means to determine infringement. They are also used for patent licensing purposes. Many law firms, corporates and attorneys have joined hands with knowledge process outsourcers to determine the nature and extent of overlap or the “read on” of claims against an alleged infringing product. The nature of overlap is determined by a technical analysis, which may involve the reverse engineering of the infringing product. The extent of overlap is reported by textual and visual representations of snapshots taken from the documents associated with the infringing product.
Invalidity searches are next on the list. A devastating prior art reference cited by the alleged infringer against a patent owner may spell catastrophe for the patent owner. These references have the potential to make the patented invention obvious to a person ordinarily skilled in the relevant art.
Third in the list of outsourced services is a response to invalidity contentions. Alleged infringers come up with numerous references to destroy the novelty/inventive step of the patent. Responses to invalidity contentions are technical analysis reports which distinguish the claims of patents from the cited references.
Various other services associated with patent infringement are also in great demand. Such services include file wrapper analyses, claim strength determinations, patent damage evaluations and duty of candor analyses.
The latest buzz on the intellectual property scene surrounds patent infringement insurance. For inventors, this kind of insurance would cover the legal costs of enforcing their patent by suing the infringer. For third parties (alleged infringers), the insurance would cover the legal costs of defending their products when sued by the inventor.
Amit Aswal is a patent engineer and heads the patent licensing and infringement unit at Clairvolex Knowledge Processes, a Delhi-based legal outsourcing firm.
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