After a patent has been issued, the owner has the power to enforce the patent. Most patent owners start by negotiating with the infringer because enforcing a patent is a long, expensive procedure. Often, negotiations end with the infringer agreeing to pay a license fee to the patent owner so that the infringer can continue to use the invention. With the help of an attorney, if negotiations fail, the patent owner will need to make a determination that there is an infringement and file a federal court action to enforce the patent.
Federal law governs patent enforcement. Federal district courts have jurisdiction over patent infringement claims and other civil cases arising out of patents. The Federal Circuit reviews appeals from the district courts.
In order to decide whether there is a patent infringement, you will need to look closely at the patent’s claims, which are statements in the patent that specify the scope of the invention. When elements of a patent claim match elements of the accused product, which is known as “reading on” or “teaching” the product, there is infringement. Courts also apply a doctrine of equivalents, which means that the invention and the accused product are sufficiently the same in what they do and how they do it so that infringement should be found.
The two main defenses available if you are accused of infringing a patent are that the patent is invalid or that, even if the patent is valid, the accused product does not infringe the patent. The Patent Act gives a presumption of validity to an issued patent. If you defend a patent infringement suit on the grounds that the patent is invalid, you will carry the burden of establishing the patent’s invalidity. You will need to prove to the court that the patent is not valid and that the United States Patent and Trademark Office (PTO) should not have issued the patent in the first place. If the court agrees with you, the patent owner will be left in a worse position than it was in before suing.
You cannot defend a patent infringement suit on the grounds that you independently invented the accused device or process. However, if you have invented something that you worry someone might claim is a patent infringement, you can file a lawsuit to obtain a declaratory judgment that the patent at issue is invalid or that your invention does not constitute infringement.
If the court finds infringement, it can issue certain orders. For example, it can issue an injunction to stop further use or sale. It can also award damages to the patent owner or work with the party to create a licensing agreement that allows the infringing party to pay the owner royalties in exchange for permission to continue using the infringing product.
The damages that are awarded upon a finding of infringement cannot be less than a reasonable royalty for the infringer’s use of the invention, along with interest and costs. The court can increase damages to up to three times the amount found or assessed by the jury, except in the case of provisional patent rights. Expert testimony can be submitted to help in determining what royalty would be reasonable given the situation.
