For start up companies, one of the most common questions
asked is: we are considering developing a product, are we infringing upon
other’s IP? To understand whether your
planned product infringes upon other’s patents, the first step is always to do
a patent search. And the second step is
to analyze where your planned product stands in regard to the direct
infringement, induced infringement and contributory infringement.
In my past posts, I discussed various ways of doing patent
or literature search. In this and next
few posts, let’s look at various types of infringements.
Section 271 of the Patent Act, 35 USC 271, provides three
provisions each addressing a type of infringement. Subsection (a) governs direct infringement
and provides:
“Except as other wise provided in this title, whoever without
authority makes, uses, offers to sell, or sells any patented invention, within
the United States or imports into the United States any patented invention
during the term of the patent therefor, infringers the patent.”
Under this form of liability, your mental stat is
irrelevant. Direct infringement is a
strict-liability offense. This means
that regardless of your intention or lacking thereof to infringe upon a patent,
as long as your product infringes upon a patented claim, you are an
infringer.
A direct infringement analysis starts with the determination
whether a patented claim literally “reads on” your product (or process), or
covers your product (or process) under the doctrine of equivalents. The former is called literal infringement and
the later is termed the infringement under the doctrine of equivalents.
The term “literal infringement” means that each and every
element recited in a claim has identical correspondence in your product or
process. When there is no literal
infringement, a claim could still be infringed under the doctrine of
equivalents if some elements of your product (or process) perform substantially
the same function and in substantially the same way to achieve substantially
the same result as in the patented claim.
Therefore, the steps in an infringement analysis are:
1. Construe the scope of the
“literal” language of the claims.
2. Compare the claims, as
construed, with your product (or process) to determine whether there is literal
infringement.
3. If there is no literal
infringement, construe the scope of the claims under the doctrine of
equivalents.
The most efficient way of perform above analysis is to prepare
a claim chart. In Column 1, list out all
the elements in a patented claim. In Column
2, list all the elements in your product (or process) and match each element up
with the element in the Column 1. If
there are elements in your product (or process) that do not match up literally
with the elements in the Column 1, place them temporarily in Column 3. Then, look at the function and the end result
of the elements in Colum 3 and ask yourself—whether a Column 3 element performs
substantially the same function and in substantially the same way to achieve
substantially the same result as an element in Column 1. If yes, match them up. After that, step back and look at your claim
chart—if each element in Column 2 and Column 3 matches up perfectly with the
elements in Column 1. You might have a
potential infringement issue in your hand.
If not, you are not off the hook yet; you should be looking at induced
infringement and contributory infringement issues.
Thanks for reading.
Connie
