FAQ: Questions and Answers

[back to notice text] Question: Does it matter if infringement is accidental or innocent? Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement. [back to notice text] Question: What is a patent? Answer: A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., Patent law is driven by the language of the Patent Act, 35 U.S.C. [back to notice text] Question: What are the consequences of being found to have committed patent infringement? Answer: A patent owner may recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be "willful." The patent owner may also be entitled to enjoin further use and sale of the patented invention. [back to notice text] Question: What does it mean to "infringe" a patent? Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent. [back to notice text] Question: How can I search for a U.S. Patent? Answer: Issued U.S. patents can be found on the United States Patent and Trademark Office website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/. [back to notice text] Question: What are the defenses to patent infringement? Answer: There are two basic lines of defense: non-infringement and invalidity. Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing. Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent. [back to notice text] Question: What does it mean to obtain a license for a patent? Answer: A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner's rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a "license," a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties.

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