What is the difference between patentable and infringing?
Can a concept be both patentable and infringing? Can your patent protect you from infringement? One of the most common misconceptions about patents is the notion that a patent protects the patent owner from infringing the patents of others.
It sounds so reasonable – “I have a patent. Therefore, I should be able to make my patented product, right?” Wrong.
You can patent a product, and your patented product can still infringe on other patents. It happens all the time. Let’s dig into the distinction between patentability and infringement.
“I have a patent. How can I still infringe?” – Why Your Patent Does Not Protect You from Infringement
A common myth is the idea that getting a patent protects you from infringing other patents. Aren’t patents supposed to give you exclusive rights? How is it possible that you can still infringe other people’s patents when you have your own patent?
It boils down to this. A patent provides the owner with the right to stop others from using the patented invention. A patent does not confer the right to make or sell anything.
This right to exclude others may include licensing rights. A patent license, therefore, is essentially a forbearance agreement where the patent owner 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.
All Offense, No Defense: Why Patents Do Not Give Owners Freedom to Sell Their Patented Products
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 and infringement. To be patentable, an invention has to be novel and nonobvious over what’s been done in the past. We call the past stuff “prior art.”
Prior art generally consists of earlier patents, printed publications, existing products and methods, technologies in public use, etc. Whether or not you can patent your invention essentially 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 turns on whether your product contains all the required limitations of at least one claim in a patent.
The following hypothetical of an invention that is both patentable and infringing may help to illustrate this distinction.
What is an example of a product 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. Suppose your invention comprises three features, ABC. In other words, you added a new feature C to a prior art product, resulting in a new combination. We call this new feature a point of novelty.
So the prior art shows a combination of AB. We will assume that feature C makes your combinatoin novel and nonbvious. Therefore, your ABC combination is patentable.
Now let’s turn to infringement. Infringement occurs if every limitation of at least one independent patent claim is found in the accused product. Notice that I said “product,” and not invention. Infringement activities involve using, making, selling or offering for sale (advertising). The mere act of inventing or coming up with ideas would not infringe.
In our example above, would a product with features ABC infringe the patent that claims AB?
Yes, the ABC 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. What results is a checklist of that independent claim. You 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 getting a patent if does not guarantee 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.
Need to patent your product and avoid infringement?
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