The process of discerning patent infringement

By: ANDREW SCHROEDER
Submitted: 2009-08-31 17:54:19
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Discerning whether there is direct patent infringement is kind of like being an insurance claims adjuster.  There are a lot of similarities between patent infringement and insurance claims.  Words like "scope" and "coverage" are bandied about liberally.  Both endeavors require a lot of legal hair-splitting.  They both obsess over minutiae such as the differences between a screw with a phillips head or a straight slot head.  And if you have not figured it out by now, some things are covered and some things are not covered.  Many people think that patents somehow cover everything about that particular invention.  Truth be told, the patent only covers what the claims says it covers.  You should think of the claims of a patent as being like the metes and bounds of a piece of real estate.  In those descriptions, they will clearly spell out what they feel is in their territory.  They will give you enough information to nearly tell whether a single blade of grass is in your property or yours.  Again, this is like reading the claims of a patent.

In order to try to figure out whether you are infringing on someone else's patent, or whether someone else is infringing on your patent, you have to first start out by looking at the policy and seeing if you’re covered.  You will find this coverage, or scope of coverage in the patent itself.  Typically you will find this near the end of the document in the claims section.  They are easy to spot: it will begin by saying: “I claim…”.  And each claim will be enumerated with a bunch of numbers.

Next, you should compare the elements and limitations of the claim with the competing product or service.  If every element or limitation detailed in the claim is in the product, bingo, you’ve got direct patent infringement.  If not, then you do not, with the possible exception of the doctrine of equivalents and contributory patent infringement.   Now you should note here that you cannot get around patent infringement by adding things to a product or service.  However, the opposite is true.  You can possibly get around a patent by taking out a component, piece, or limitation out of that product or service to get around that patent.

Of course, the author will be remiss if he does not caution that other ancillary issues may be brought to bear which may change the analysis.  The doctrine of equivalents and contributory infringement may also be issues.  In which case, you should consult an experienced patent attorney. 

One more tip to speed you along the process is that you really only have to check the independent claims.  The independent claims are those that do not have numbers in them.  And they never start off with the word “the”.  Also, independent claims never refer to other claims in the patent.

Please keep in mind that this analysis only relates to direct patent infringement.  As previously stated, other issues may inhere with the question such as indirect infringement or the doctrine of equivalents.

Andrew Schroeder is a licensed Patent and Trademark Attorney in Los Angeles, California.
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