What is the difference between patentability (novelty) and infringement?

One of the most common misconceptions about patents is the notion that getting a patent protects the owner from infringing other patents. It sounds reasonable – “I have a patent. Therefore, I should be able to make my patented product, right?” Wrong.

As counterintuitive as it may seem, a patent does not confer the right to make or sell anything. Instead, a patent provides the owner with the right to stop others from using the patented invention.

This right to exclude others may include licensing rights. A patent license, therefore, is essentially a forbearance agreement where the owner/licensor agrees not to sue the licensee for selling a patented product. That also means that a licensee of a particular patent might still be liable for infringing other patents. It is not uncommon for a product to infringe tens, or even hundreds, of patents particularly in the electronic hardware and software sectors.

Why doesn’t a patent give the owner freedom to sell a patented product?

A patent owner selling its own patented product may still be liable for infringing other patents. The reason has to do with the difference between patentability (aka “novelty”) and infringement.  To be patentable, an invention has to be new and unique over what’s been done in the past, namely, the “prior art.” Prior art generally consists of earlier patents, printed publications, devices and methods in public use, etc. Basically, whether or not you can patent your invention depends on how unique your invention is over what has already been done.

Infringement, on the other hand, has nothing to do with the novelty of your product. Unlike patentability, the question of infringement relates to whether your product or process contains all the limitations (i.e., features) of at least one claim in a patent. It may be easier to grasp this distinction with a hypothetical of an invention that is both patentable and infringing.

Example of an invention that is both patentable and infringing

Let’s assume the prior art includes a product with a combination of two features: A and B, or simply AB. Let’s further assume your invention comprises three features, ABC. In other words, you added a new feature C (aka “point of novelty) to a prior art product, resulting in a new combination.

Keep in mind that your invention must be new and unique over the prior art in order to be patentable. In our hypothetical above, the prior art shows a combination of AB. Since your invention added a new feature C that was not disclosed or suggested in the prior art, your invention would be patentable.

Now, let’s turn to infringement. If every limitation of at least one independent patent claim is found in the accused product, you have “literal” infringement. In the example above, if you made a product with features ABC, would this product infringe the prior art patent that claims AB? Notice that we said product, and not invention. Infringement activities involve using, making, selling or offering for sale (advertising). Mere abstract ideas do not infringe.

In the above example, your product would infringe the AB patent. A helpful way to analyze infringement is to list each limitation or element of each independent claim in a chart and then compare this checklist against your product. As you go through each element, place a check next to each element found in your product. If you end up checking off each element, then you have “literal infringement.”

If one or more elements are not checked, then you do not have literal infringement. However, you still have to consider infringement under the doctrine of equivalents. This is a much more in-depth analysis that generally requires review of the file history, or prosecution history, of the patent.

If in doubt, consult your patent attorney. You may want to have a non-infringement opinion done in order to minimize the chances of treble damages (multiple money damages, up to three times).

Why bother patenting if you aren’t guaranteed the right to make the patented product?

It’s a fair question: What’s the point of getting a patent if you can’t make the product? The key is the ability to exclude others from copying your innovation. Referring back to our example above, suppose you chose not to file while the owner of the AB patents ABC. Instead of having a valuable patent that can be licensed to others, your competitor who now owns two patents – on AB and ABC – will enjoy the benefit of licensing its patents or blocking the competition.


The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

Latest posts by Vic Lin (see all)