Where to start if you have been accused of patent infringement
Disruptive and disconcerting – two of the most common emotions experienced by one accused of infringing a patent. Determining whether your products infringe a patent requires a methodical approach. A careful comparison of the patent claims and your accused products will help guide your strategy and next steps.
Are you accused of infringing a design patent or utility patent?
A design patent will have the upper case “D” followed by a number. Here’s an example of a US design patent. What a design patent covers will be defined by the drawings. Therefore, a visual comparison with the design patent drawings will be required to see if your product looks substantially similar.
A utility patent will have a number of claims at the end of the written text. Whereas design patent infringement boils down to the drawings, determining utility patent infringement requires a careful reading of the written claims. It would be a costly mistake to judge the scope of a utility patent by simply looking at the figures.
Start by looking at the independent claims
Start by identifying all the independent claims in the utility patent. Even if you can’t make sense of them, you should be aware of the number of independent claims that exist because your noninfringement analysis will require it.
If a particular patent has three independent claims, for example, the patent owner basically has three arrows in the quiver to shoot at your products. All they need is one arrow to hit. You must dodge each of these independent claims in order to avoid infringing the patent. You cannot assume you’re safe because your products avoid one independent claim when two other independent claims remain in the utility patent.
What will your patent attorney look for in analyzing noninfringement?
It goes without saying that you need an experienced patent attorney to help you navigate through the complex analysis of utility patent infringement. But, what will your patent attorney be looking for? The patent attorney will focus on any features recited in the independent claim, called “claim limitations,” that are arguably missing in your products. Preferably, multiple claim limitations in each independent claim will be absent from your products. The absence of claim limitations in your products will equip your patent to form a stronger noninfringement defense.
What if you sold similar products before the patent was filed?
Another way to defend against a patent infringement claim is to argue that the patent is invalid. Invalidity refers to the patent claiming an invention that was not new and unique. In other words, preexisting products or literature already showed the patented invention before the patent application was filed.
To invalidate a patent, every element of the claim should be found in the prior product. Whereas noninfringement is about omitting certain claim limitations, invalidity is about including every claim limitation.
How to sell products that do not infringe patents
There may be a strategy for moving forward whether or not your products are infringing. Consider designing around the asserted patents by modifying your products. The key is knowing which product features to omit or change. Even if you believe your current products do not infringe the patent at issue, it may still be worthwhile to pursue certain product modifications that can reduce the risk of infringement without being overly burdensome.
An experienced patent attorney may want to study the file history of the asserted patent (e.g., Patent Office rejections and applicant’s responses) to identify the more important claim limitations to avoid, if possible.
If you patented your products, will your patent protect against infringement of other patents?
No, your own patent does not offer a defense against infringing other patents. However, you might be able to use your patent as a counterattack against competitors who are accusing you of infringement.