The patent system is intended to spur innovation, incentivize inventors, and protect against infringement. One of the big challenges innovators face in this realm is understanding patentability and what constitutes infringement.
Criteria for Patentability
Patentability requires consideration of three key criteria: novelty, non-obviousness, and usefulness (or utility). The requirement of utility is a de minimus requirement and is met if any use can be had from the claimed invention. To be patentable, an invention must be novel meaning it cannot be part of the existing body of knowledge known as “prior art.” It must also be non-obvious meaning it cannot be an obvious extension of existing technologies or solutions when viewed by a person of ordinary skill in the art.
The scope of patentable material is wide, encompassing everything from new chemical compounds to software methods, and from mechanical devices to biotechnological processes. However, there are limitations. For instance, abstract ideas, natural phenomena, and artistic creations are in the public domain and are ineligible subject matter.
Patent Infringement
Patent infringement occurs when an individual or entity makes, uses, sells, or imports a patented invention without permission from the patent holder. While this may sound straightforward, it’s not; determining infringement is often a complex matter requiring detailed legal analysis.
There are several forms of infringement to be aware of:
-
- Direct Infringement: The infringing product or process directly falls under the scope of the patented claims. The doctrine of equivalents is also direct infringement in which a product or process contain elements identical or equivalent to each claim element of the patented invention.
- Indirect Infringement: Where a third party contributes to or induces others to infringe.
Distinguishing Between Patentable and Infringing
The distinction between what is patentable and what is infringing is defined by the scope of the patent claims. For instance, a new invention that improves upon a patented product may still be patentable even though the envisioned product itself may infringe on the patented claims. On the other hand, a product that is not patentable may also infringe granted patents.
Legal Consequences and Remedies
The consequences for infringing on a patent can be severe, ranging from monetary damages to injunctive relief.
-
- Monetary Damages: Courts can award significant damages to the patent holder, often based on the what the court determines to be a “reasonable royalty” but may also consider profits lost due to the infringement. In cases of willful infringement, these damages can be trebled.
- Injunctive Relief: In some cases, courts may issue an injunction to prevent further infringement. This can halt the production or sale of the infringing product, having a substantial impact on the infringer’s business.
- Legal Costs: The cost of litigation in patent cases can be substantial, adding another layer of consequence for the infringer.
Given the stakes involved in patent infringement, it’s crucial for companies and individuals to take proactive steps to avoid it, including consulting with experienced legal counsel.
Conclusion
Understanding the difference between patentable inventions and infringing actions is critical in our innovation-driven economy. By grasping the distinctions, you can harness the power of intellectual property while avoiding the pitfalls of infringement.
If you or your business is interested in intellectual property services, such as drafting patent applications, conducting freedom to operate opinions, analyzing patentability, or determining infringement risks, contact Andrew G. Martin or your Fraser Trebilcock attorney.
This alert serves as a general summary and does not constitute legal guidance. Please contact us with any specific questions.
Andrew G. Martin is an experienced registered patent attorney with history working in the automotive, electrical, and agricultural industries. He regularly advises startups and small businesses on the patent and trademark prosecution process, assisting clients from start to finish. You can reach him at 517.377.0834 or at amartin@fraserlawfirm.com.