Patents: are they a blessing or a curse? (part 3)

What does a patent do for the patentee, how can you tell what a patent excludes others from doing, and what is meant by offensive and defensive litigation?

In this final article in a 3-part series, Alice Martin and John Wappel of Barnes & Thornburg, LLP address some of the key issues that arise when companies become involved with the patent system.
View Part 1 of this article.
View Part 2 of this article.

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What does a patent do for the patentee?

Patents do not give patentees the right to practice the invention. Patents give the right to exclude others from making, using, offering for sale, selling or importing the invention as claimed. If those who are excluded make, use, offer for sale or sell, the invention as defined in the claims, they “infringe” the patent, and can be sued by the patent owner. A patent is only as useful as the claims that appear at the end of it -- sometimes in cryptic legalese.

How to tell what a patent excludes others from doing

Claims define what an issued patent excludes others from doing. Claims are identified by a heading including the word “claims” and are numbered sequentially. Depending on what source is used to print a patent, claims will be either at the beginning or end of the patent.

The first part of each claim states whether a composition, an apparatus or a method is claimed. The remainder of the claim lists elements of the invention. No one may make, use, sell, or offer for sale a product that has all of the elements listed in a patent claim without the permission of the patent owner. If the accused product has each and every element of a patent claim, the claim is said to "read on" the accused product, and the product infringes the claim. To literally infringe, each claim element must be present in the method, products or apparatus being challenged. There are other forms of infringement, if literal infringement is not found.

It is important to see to what the claims relate because only the same type or category of subject matter can infringe a claim, that is, a light bulb can infringe a claim for a light bulb, but a light bulb cannot generally infringe a method of making a light bulb.

Litigation - offensive and defensive

If a patent is infringed, the owner or exclusive licensee enforces their rights by, for example, warning the infringer, and/or seeking a license agreement to obtain royalties from the infringer and/or suing the infringer. Litigation is very expensive, so avoiding it by agreements is preferred. Remedies include injunctions and monetary damages. If it can be proven that infringement was “willful”, awards of damages may be increased by as much as three times the actual damages.

Defenses to infringement include proving the method or product at issue does not have all the claimed elements in the patent. Also, the patent validity is challenged by determining whether criteria for patentability were satisfied and determining if there was any impropriety on the part of the patentee, e.g. hiding art from the patent examiner.

Are patents a blessing or a curse?

The patent system was instituted based on the belief that the benefits of patents were to reward inventors and stimulate invention. The goal was to discourage trade secrets as a means of protection. Thus, the patent system strikes a balance by granting exclusive rights to inventors for a limited period of time in exchange for the inventor's knowledge and technical expertise. Disclosing intellectual property to the public was to encourage further invention and innovation, using patent disclosures as a building block for further innovations.

Although the U.S. patent system provides a protection to inventors for a limited time in their inventions, competitors are free to design around the invention protected by a patent and “build a better mousetrap” of their own. This energy should benefit an industry. Litigation is expensive, risky and time-consuming, and the need for litigation can be alleviated by licensing and avoiding infringement.

Ultimately, the incentive allowing inventors to reap the rewards from their inventions encourages technological advances that benefits society as a whole as well as industry and the inventors.

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