How to Prove Patent Infringement: The Four Categories of Proof
In order to prove patent infringement, your lawyers and their team need to identify and prove all four categories of proof: (1) ownership of the patent, (2) the scope of the claims in the patent, (3) that you have been or will be damaged by the alleged infringer’s actions, and (4) that the accused product falls within the scope of protection under the claims. To explore these areas in more depth, see this article.
- Ownership of the patent
Inventors who have created a patentable invention must take the initiative to file a patent application on their own. The invention owner can file a provisional application on their own or have a patent agent file a non-provisional application on their behalf. If the patent is not already filed and granted, the applicant must file the application and pay the filing fee. And, if the applicant is successful, the patent will be granted and the inventor should issue a written series of smaller applications based on the original application and any amendments or additions.
As soon as the patent application has been filed with the United Kingdom Patent and Trademark Office (UKIPO), your inventors have a few months to start marketing, making, and/or using the patented invention before it’s “officially” granted. The immediate options for marketing your invention after filing are to create a brochure, webpage, product brochure, box, case, or other display containing the patented details, start selling the patented product, or start a business.
Once your patent application has been granted, you can start using your invention. Mostly this means that you are creating, and/or launching, a new product that falls within the scope of the patent. If you’re selling an old product or launching a new one, you do need to wait for the patent office to burn out their old listings for the products. It’s likely you’ll still have to pay the filing fee, but the patents are usually not a problem.
Protected Technology
The technology you invent or have licensed usually falls into one of four “protected” categories: national security; comparative fiber sciences and technologies; biological products; and measurement methodologies. The four categories can be particularly confusing because each patent application could describe the properties of several different types of protected technology.
2. The scope of the claims in the patent
The scope of the claims in the patent needs to be very, very carefully considered. If you’re looking at a patent and you’re saying “I’m going to create my product around this patent”, you need to look at the claims carefully to determine what’s actually covered in the patent. Personally, I look very carefully at claims 5, 14a, 15(c), and 56 and look for patterns and similarities in descriptions, similarities between alleged products and processes, and general trends in innovation.
I did a good job with my analysis of claims 1–5! Most of what you may think is covered under those claims is not. In particular, it’s important to pay attention to claims (1) and (4). What does that mean? Basically, when you think about these broad definitions in regards to the four major types of claim elements, the implication is that if you invent something with any of these four elements, then you are in infringement!
Everyone gets upset when they hear a CEO, millionaire, or other “troublemaker” arguing the need for copyrights. As a startup CEO, when you’re arguing with your lawyers over copyrights, you’re essentially saying “look, you’re being greedy and opportunistic, I already exist and you don’t have any need and I am going to take advantage of you.” Uh oh, that’s not going too well.
Here’s what Carter meant. Please pay attention.
A claimed patent gives a lot of information about the underlying technology and its potential application. I’m not identifying any particular patented technology by name or creating any kind of “sick burn” type of reaction. My goal is to understand what those broad definitions of the four claim elements mean so that I can be critical of what a “troublemaker” might be saying and potentially advocating lawsuits.
I think, for example, that there are many patent applications in non-software industries where it is relatively easy to build mechanisms that mimic patented technology so that competitors in those spaces don’t have an advantage over substitutes. When that happens, it’s merely a level playing field for all competitors.
3. That you have been or will be damaged by the alleged infringer’s actions
This is probably the most difficult of the elements to prove, but the easiest to explain. Transfer of ownership is something you legally own. So when a company files a patent application, they own the patent. In this same way, if you own an invention, you legally own all of the rights to the invention without having to prove that you actually own them, or assign them to someone else. This means that you can patent something without actually having to prove to other people that you own it. And before we get into how difficult it is to prove, it’s important to note that you are far more likely to find yourself legally stuck with someone else’s claim than yours, if you are attempting to bring a patent lawsuit against them.
A patent serves as a sort of key to unlock an area of a design that has never been done before. So if I had a patent on foldable screens that allowed me to cover more of the surface of the display, for example, everyone in the world could see that the idea came from me. Therefore, claiming ownership grants everyone in the world exclusive rights to, well, you.
Some people wave patents around in front of you in a business conversation. If they’re trying to trick you into buying their product, they’re probably showing off their patents in front of you so that you can’t refuse to buy what they’re selling. Therefore, if you own someone else’s patent, you can make the ownership claims on their behalf, and serve as their defense.
This one might be tougher to prove than the previous two. The duty to disclose isn’t just something you have when you get a restaurant receipt; it‘s a general legal requirement in patent law.
4. That the accused product falls within the scope of protection under the claims
A product that falls within the scope of protection of the claims is called a product that falls within the scope of protection of the claims. I say “claims” and “product” in quotations because the product is an umbrella term that encompasses a wide variety of different features. Tom’s Guide offers a great example of when to use and not use the phrase “product” for abbreviations and definitions.
Before diving into pre-trial arguments, let me make sure we agree that patent infringement is almost always a good idea. Whether you are working at a large giant or a small start-up, infringement will help demonstrate your seriousness about your business. It will also help you develop and protect your brand and intellectual property. Nothing is more detrimental to your business than having your own competitors succeed where you have failed.
Given the broad and ever-changing nature of the law, as it relates to patents and copyrights, there are no solid rules to follow. It is your job to learn as much as you can about the law, but absolutely nothing at this point can be definitively ruled in or out. Thus, before turning to the main information packet, it is important to understand these four areas to ensure you make a confident and good choice on which type of case you will bring to court:
The Nature of the Claim
It makes little difference whether the company making the infringing product has a single product or several products under its belt. If the case concerns only one product or company, then you will almost always have to prove infringement through direct, specific marketing.
However, infringement cases involving multiple products can be more challenging to prove. If, for example, a competitor has several websites listed for nearly similar things, and those websites each make money off advertising on the front page of those sites, it may be difficult to prove direct marketing infringement.
Conclusion: Patent infringement cases are complex to prove, but with a good lawyer and a solid case, you should have no problem proving that your competitor is infringing on your patent rights. To conclude, patent infringement cases are complex, and it’s not usually easy to prove. That said, with a good lawyer and a solid case, you should have no problem proving that your competitor is infringing on your patent rights and you should be able to get the court to order them to stop and pay you damages.
