Patent infringement
Also called infringement of a patent, direct infringement, induced infringement, contributory infringement, literal infringement
Patent infringement is the exercise of a patent owner's exclusive rights without authority. In the US, whoever without authority makes, uses, offers to sell or sells a patented invention within the United States, or imports it into the United States, during the term of the patent infringes the patent (35 U.S.C. 271(a))1.
What infringes depends on the patent's claims and on national law. The extent of protection of a European patent is determined by the claims (Article 69(1) EPC)2, and any infringement of a European patent is dealt with by national law (Article 64(3) EPC)3. The Unified Patent Court also has competence over actions for infringement of patents (Article 32(1)(a) UPCA)17.
Direct, induced and contributory infringement
Section 271 of the US Patent Act sets out three kinds of infringement1.
| Kind | What the statute says | What must be shown |
|---|---|---|
| Direct, 271(a) | Without authority, making, using, offering to sell or selling a patented invention within the United States, or importing it into the United States, during the term of the patent1 | Direct infringement is a strict-liability offense in which the defendant's mental state is irrelevant6 |
| Induced, 271(b) | Whoever actively induces infringement of a patent is liable as an infringer1 | The defendant knew of the patent and that the induced acts constitute patent infringement6,7. Willful blindness satisfies the knowledge requirement7. Someone must have directly infringed: liability for inducement must be predicated on direct infringement19 |
| Contributory, 271(c) | Offering to sell, selling or importing a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in a patented process, that is a material part of the invention1 | Knowing it to be especially made or adapted for use in an infringement, and not a staple article or commodity suitable for substantial noninfringing use1. Knowledge of the patent and of patent infringement is required6. As with inducement, there must be direct infringement19 |
Section 271 also contains exemptions. For example, 271(e)(1) provides that it is not infringement to make, use, offer to sell or sell within the United States, or import into the United States, a patented invention solely for uses reasonably related to the development and submission of information under a federal law that regulates the manufacture, use or sale of drugs or veterinary biological products, subject to exceptions stated in the text1.
Literal infringement and equivalents
Infringement is judged against the claims of the patent. In the US, the Supreme Court has said that, if accused matter falls clearly within the claim, infringement is made out8. The claims also set the extent of protection of a European patent, with the description and drawings used to interpret them (Article 69(1) EPC)2. See Patent claim.
| Route | Question | Rule |
|---|---|---|
| Literal infringement | Does the accused product or process fall within the claim as written? | US: if accused matter falls clearly within the claim, infringement is made out8 |
| Equivalents | If it does not, does it contain an equivalent of a claimed element? | US: the classic test is substantially the same function in substantially the same way to obtain the same result8. The doctrine applies to individual claim elements, not to the invention as a whole9. Europe: due account is taken of any element equivalent to an element in the claims (Article 2 of the Protocol on the Interpretation of Article 69 EPC)10 |
Remedies in the US (35 U.S.C. 283 to 287)
- Injunction. Courts may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on terms the court deems reasonable (35 U.S.C. 283)11. The Supreme Court held that the traditional four-factor test (irreparable injury, inadequate legal remedies, balance of hardships, public interest) applies to permanent injunctions in patent cases12.
- Damages. On a finding for the claimant, the court awards damages adequate to compensate for the infringement, and in no event less than a reasonable royalty for the use made of the invention, with interest and costs (35 U.S.C. 284)13.
- Increased damages. The court may increase damages up to three times the amount found or assessed. This does not apply to provisional rights under 35 U.S.C. 154(d) (35 U.S.C. 284)13.
- Attorney fees. The court in exceptional cases may award reasonable attorney fees to the prevailing party (35 U.S.C. 285)14.
- Time limit. Except as otherwise provided by law, no recovery is had for infringement committed more than six years before the filing of the complaint or counterclaim (35 U.S.C. 286)15.
- Marking. If a patentee, or someone making, offering for sale, selling or importing a patented article for or under the patentee, fails to mark it as the statute describes, no damages are recovered except on proof that the infringer was notified and continued to infringe, and then only for infringement after notice (35 U.S.C. 287(a))16. Filing of an action for infringement constitutes such notice16. See Patented product.
Where you sell changes the answer
United States
Europe
- From the date the mention of grant is published, a European patent confers on its proprietor, in each Contracting State for which it is granted, the same rights as a national patent granted in that State (Article 64(1) EPC)3.
- Any infringement of a European patent is dealt with by national law (Article 64(3) EPC)3.
- The extent of protection is determined by the claims, and the description and drawings are used to interpret them (Article 69(1) EPC)2.
- The Unified Patent Court has exclusive competence for actions for actual or threatened infringements of patents (Article 32(1)(a) UPCA)17. During a transitional period of seven years after the Agreement entered into force, an action for infringement of a European patent (one without unitary effect20) may still be brought before national courts, and the proprietor of such a patent can opt out of the Court's exclusive competence unless an action has already been brought before the Court (Article 83(1) and (3) UPCA)18. A Unitary Patent cannot be opted out18,20.
China
- After the grant of an invention or utility model patent, no entity or individual may, without the patentee's authorization and for production or business purposes, manufacture, use, offer to sell, sell or import the patented product, or use the patented process and use, offer to sell, sell or import the product directly obtained by it (Patent Law of the PRC, Article 11)5.
- For a design patent, the listed acts are manufacturing, offering to sell, selling or importing products incorporating the patented design (Article 11)5.
- A dispute is resolved through consultation, or the patentee or an interested party may sue in the people's court or ask the departments in charge of patent-related work to deal with it (Article 65)5.
- If the alleged infringer proves that the technology or design it uses forms part of the prior art or prior design, the exploitation is not infringement (Article 67)5.
- Compensation is based on the right holder's actual losses or the infringer's profits, or failing that on a multiple of the patent license royalty. For intentional infringement in serious circumstances it may be set at one to five times that amount. Where none of these can be determined, the court may set compensation of RMB 30,000 to 5,000,000 (Article 71)5.
Infringement vs litigation vs freedom to operate
| Concept | What it is | Where it sits |
|---|---|---|
| Patent infringement | The unauthorized act that violates the patent right, for example under 35 U.S.C. 2711 | A legal conclusion that depends on the claims and national law2,3 |
| Patent litigation | A court action in which infringement, and often validity, is decided. See Patent litigation | The process in which infringement is argued and decided |
| Freedom to operate | The ability to make, use, sell or import a product without infringing others' patents, checked by a search for unexpired patents that launching the product could infringe4 | Done before a product is launched4 |
Seen in the record
The Supreme Court has addressed what a defendant must know to be liable for inducing infringement7. The decision is cited for the legal standard; it says nothing about either party beyond the record.
Global-Tech Appliances, Inc. v. SEB S.A.
The Court held that induced infringement under 35 U.S.C. 271(b) requires knowledge that the induced acts constitute patent infringement, and that this knowledge can be shown by willful blindness. It affirmed because the evidence supported a finding of knowledge under that doctrine7.
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Run FTO SearchQuestions people ask
Do you have to know about a patent to infringe it?
For direct infringement in the US, no. It is a strict-liability offense in which the defendant's mental state is irrelevant6. Induced and contributory infringement are different: liability requires knowledge of the patent and of patent infringement6. Willful blindness satisfies the knowledge requirement7.
Is an infringement search the same as a freedom to operate search?
Often, yes. WIPO's patent information module describes an infringement search as also known as a right to use, freedom to operate or clearance search, done to determine whether unexpired patents would be infringed by launching a product4. See Freedom to operate.
How long after an infringing act can the owner sue?
It depends on the country. In the US, the statute limits the damages period rather than the filing date: except as otherwise provided by law, no recovery is had for infringement committed more than six years before the complaint or counterclaim (35 U.S.C. 286)15. In China, the limitation period is three years from the date the patentee or interested party knows or should have known of the infringing act and the infringer (Article 74)5.
What can a court order if a patent is infringed?
In the US, a court may grant an injunction under the principles of equity11,12 and must award damages adequate to compensate, in no event less than a reasonable royalty13. It may increase damages up to three times13 and may award attorney fees in exceptional cases14.
How it connects
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- 01 / How-toHow to run a freedom-to-operate analysisScope, search, claim review and the report counsel will ask for.Read
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