What is inducement of patent infringement?

Inducement of patent infringement is (sparingly) defined by statute in 35 U.S.C. §271(b). Affirmatively and intentionally causing, encouraging, or aiding the direct infringement of another constitutes inducement. As with all indirect patent infringement, it requires that you knew or should have known of the infringed patent.

What is contributory patent infringement?

Contributory infringement is defined by statute in 35 U.S.C. §271(c). It is contributory infringement to offer for sale or import a part of a patented invention, knowing that it is specially adapted for infringing the patent, where the part has no substantial non-infringing uses.

Thus, contributory infringement can be thought of as a type of inducement, in which the intent to cause direct infringement can be inferred from the fact that the product offered for sale is suitable only for patent infringement (“When a manufacturer includes in its product a component that can only infringe, the inference that infringement is intended is unavoidable.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008)).

As with all indirect patent infringement, prerequisites for a finding of contributory patent infringement include some direct infringement and that the indirect infringer knew or should have known of the infringed patent (otherwise the indirect infringer could not know the product was specially adapted for infringement).

Future posts will explain each type of indirect infringement in greater detail. Let me know if you have any questions.

What is Direct Patent Infringement?

Direct patent infringement is a fairly straightforward concept. Look at the claims of the patent concerned, go through the elements of each claim and ask yourself, does my product have each of these elements or an equivalent?

If your product arguably has all of the elements of any claim, you might be in trouble. Uncertainty arises mainly in the proper interpretation of the claim elements. Indirect infringement on the other hand is generally not understood as well.

What is Indirect Patent Infringement?

Indirect infringement is the facilitation of direct infringement by others. Although now established by statute, it originally arose under the theory of joint tortfeasors (a tortfeasor is a civil, as opposed to criminal, wrongdoer). Under the theory of joint tortfeasors, one who intentionally causes or aids the commission of a tort by another (e.g. an indirect infringer) is just as responsible as the primary tortfeasor (e.g. direct infringer) and so the full amount of the plaintiff’s damages can be collected from either.

Thus, indirect infringement cannot exist in the absence of direct infringement, however the indirect infringer is responsible for the full amount of damages caused by the direct infringers.

Requirements for Finding Indirect Patent Infringement

Two key requirements for a finding of indirect patent infringement are that another party directly infringed the patent at issue and that the indirect infringer knew or should have known about the patent that was infringed. Without either of these elements, there can be no indirect infringement.

Relevance of Indirect Patent Infringement to Business Owners

Alleging indirect patent infringement has become a popular litigation strategy that allows patent holders to sue producers, vendors, importers, and others for selling products which either enable or require the end user to infringe the patent in question, without themselves directly infringing upon the patent. Therefore, businesses need to have an understanding of indirect infringement.

Modern patent law defines two types of indirect patent infringement: contributory patent infringement and inducement of patent infringement. My next post will summarize what constitutes contributory infringement and inducement and what you should be aware of when bringing new products to market.

However, few think about the flip side of this coin: how to ensure they are not violating the patent rights of others. Any business or entrepreneur coming out with a new product needs to be aware of the fact that you can infringe patent rights without copying a patented device, and in fact without even knowing about the patent you are violating.

The only way to be reasonably confident that you are not infringing on the patent rights of others is to have a state-of-the-art/clearance search performed to find out what relevant patents are out there. If you find anything close, it may be necessary to have a full infringement opinion prepared, advising you as to whether your new product will infringe the patent in question and if necessary advising you on ways to avoid infringement.

The typical strategy for avoiding patent infringement, once it appears infringement is a possibility, is to design around the patent in question. This is done by ensuring that the new product has features that place it outside of the scope of the identified patent. Having a favorable infringement opinion in hand will protect you from any later accusations of willful (deliberate) infringement, which carries elevated damages.

I will be discussing infringement more in subsequent posts. Please leave your questions in the comments.

In that vein, I recently came across a set of informational videos available at the World Intellectual Property Organization (WIPO) website here.  These Flash videos are geared towards small and medium-sized entities (SMEs) and address all the different types of intellectual property and their importance to the success of a business.

They have some really great practical information that just about any business owner or manager would benefit from reviewing.  My only complaint is that they seem to run somewhat slowly at times, perhaps due to the Flash implementation.

Take a look and let me know what you think about the videos in the comments.

One option is to send a letter notifying them of your pending patent application.  Reputable businesses are likely to respect your patent rights and will want to avoid a possible infringement suit in the future.  This can be particularly useful if your application is published.  If you send them a copy of your published application and a patent subsequently issues with similar claims, you may later be able to get damages for infringement during the time period between when you notified them of the application and when your patent issued.

Talk to your attorney for more details and for the proper wording of the letter for your situation.  In some instances, the best solution may also be to do nothing and bide your time until the patent issues.

Overview

So, first things first. Before you ask whether you need a patent, you should have a good idea of what exactly a patent is. What follows is a general overview. As I fill in the details with later posts, I will add links to this post in appropriate places so that you can explore each topic in greater depth.

You may think of a patent as a piece of paper- a document. Well, it is. A document describing an invention that the U.S. government, in the form of the Patent Office, has deemed worthy of patent protection is called a patent. But fundamentally, a patent is a right granted to an inventor by the government. This right is the right to exclude others from making use of an invention.

If you hold a United States patent for an invention, you have the right to exclude anyone else from making, using, selling, or offering to sell that invention in the United States, or from importing that invention into the United States. Notice that this does not mean the patent holder does have the right to make, use, or sell the invention! For example, making, using, or selling the invention may be against state or federal law due to environmental regulations or criminal law. A patent never gives you the right to do something that would otherwise be illegal.

Enforcement

It is the responsibility of the patent owner to enforce its patent. An entity that violates patent rights by making, selling, using, or importing an invention covered by a U.S. patent other than its own is known as a patent infringer. It is up to the patent owner to monitor the market for infringing products and to sue those who are violating the owner’s patent rights. If an individual inventor obtains a patent, frames it and puts it on his wall, but never monitors the market for infringement, businesses may infringe his patent and sell his invention with impunity.

Types

There are three types of patents available in the U.S. By far the most common is the utility patent, which generally protects products and processes. However, there are two additional types of patents: design patents, for ornamental designs for an article of manufacture, and plant patents, for asexually reproduced plants.

Term of protection

In the United States, the right conferred by a utility patent now lasts 20 years from the time the original patent application was filed, assuming the periodic maintenance fees charged by the Patent Office are paid.

Application process

Essentially, the government grants limited monopolies over inventions (patents) in return for public disclosure of the inventions. When a patent is granted it is published for the world to see, meaning that the inventor gives up the ability to keep the invention as a trade secret. Other businesses and inventors are free to build on and improve that invention, as long as they do not infringe the patent during its 20-year term.

Given that trade-off, the government wants to make sure that what it is getting is worth what it is granting in the form of monopoly power. For that purpose, the Patent Office requires an inventor seeking a patent to submit a patent application. This application must contain the disclosure that will be published when the patent is issued and must fully define the invention sought to be protected. The Patent Office then examines this application to ensure that the invention meets certain requirements and that the disclosure is adequate and in the correct format.

This examination process can be lengthy and frequently involves back-and-forth communication between inventors or their lawyers and examiners at the Patent Office. During this period the application may be changed, for example to overcome objections raised by the Examiner. Assuming the application is found in compliance, the application will eventually issue as a patent and will be published in the Patent Official Gazette for the world to see. The issued patent will also be available electronically at the Patent Office website, www.uspto.gov.

If you have any corrections or requests for additional topics to include in this post, please leave them in the comments.