Avoiding Patent Infringement

To steer clear of patent infringement, it’s important to thoroughly examine the claims of the utility patent and develop a design that avoids infringing on those claims. This entails ensuring that you don’t violate the claims either directly or indirectly.

What Constitutes Direct Infringement?

Direct infringement occurs when a product or process incorporates all the elements of an independent claim within the patent. You can find these claims at the back of the patent. Independent claims are those that don’t reference any other claim.

Here’s an example format of an independent claim within a patent:

  1. An apparatus comprising:
    • Element A;
    • Element B; and
    • Element C.

Products that include Elements A, B, and C in a literal sense infringe upon Claim 1. On the other hand, products that incorporate less than all of Elements A, B, and C do not literally infringe Claim 1. For instance, a product that includes Elements A and B but not C does not infringe upon Claim 1 in a literal sense. So, to avoid literal infringement, it’s crucial not to employ all the limitations described in the independent claims of the patent.

However, even if a claim isn’t literally infringed, infringement can still be established under the Doctrine of Equivalents (DOE). This doctrine maintains that even if a product doesn’t literally infringe a claim because it lacks one or more elements of that claim, infringement can still be found if the product or process includes a feature that is insignificantly different from the missing element. Consequently, a product that includes Elements A and B, along with a feature that is substantially similar to Element C, would still infringe upon the patent under the Doctrine of Equivalents.

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To ascertain whether an element can be broadened under the Doctrine of Equivalents, it’s necessary to review the communications between the patentee and the Patent Office. This review helps determine whether there are any statements or amendments to the claim that might impede or restrict the application of the Doctrine of Equivalents. The law doesn’t permit a patentee to make statements to the Patent Office stating that Element D is significantly different from Element C during a review, only to argue during litigation that Element D is actually an insignificantly different element.

Therefore, to avoid patent infringement, adjustments must be made to a product or process to evade both literal infringement and infringement under the Doctrine of Equivalents.

Myth: Looking at the Percentage Difference

Contrary to common belief, the percentage difference between a product and a patented product does not determine whether the product infringes upon the patent claims. Patent infringement can be established either on a literal basis or under the Doctrine of Equivalents.

Understanding Indirect Infringement

Indirect infringement occurs in two situations: either one actively induces another party to infringe upon a patent, or one offers to sell, imports, or uses a component of a patented machine for practicing a patented process. This component forms a substantial and essential part of the invention, and the seller or importer knows that it’s specifically designed or adapted for infringing on the patent. These components cannot be ordinary articles or commodities suitable for substantial non-infringing use.

Designing Around a Patent Claim

To design around a patent claim, you need to identify an element or limitation within the claim that is not essential to the functioning of the claimed invention. Once you pinpoint this element, you can remove it from your product while still retaining the functional aspects of the claimed invention.

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To prevent easy workarounds, the claims in your patent should be focused on the unique aspects of your invention. This way, all the limitations included in the claims become essential for the function of the invention.

For any patent-related queries, please don’t hesitate to reach out to me at Garrity Traina. Feel free to share this article with your friends. As an Orange County Patent Lawyer, I am here to assist clients in Orange County, Irvine, Los Angeles, San Diego, and surrounding areas.