Inequitable conduct, f/k/a fraud on the patent office, is a defense often raised by defendants accused of patent infringement. Simply stated, inequitable conduct involves either an intentional misrepresentation of material fact to – or an intentional withholding of material information from – the patent office (in layman’s terms: lying or hiding the ball). As a practical matter, the penalty for inequitable conduct is the loss of the patent (if you lie, you die). The courts have been increasingly likely to declare patents unenforceable due to inequitable conduct – until recently.
Thomas Jefferson, a prolific inventor, was the first patent examiner. (He didn’t spend all of his time with Sally Hemings.)
Abe Lincoln was the only president to be awarded a United States patent. (Al Gore eat your heart out.)
Albert Einstein was once a patent examiner in the Swiss patent office. (He was fired for refusing to get a decent haircut.)
Patent attorneys are reputed to have a great sense of humor. (This may be the most difficult to believe.)
Broadly speaking¹, patent claims may cover either products (article claims) or processes (method claims). Method claims have become increasingly common as inventors seek to patent various methods of conducting business operations, especially conducting business via the internet – the infamous “business method patents.” Infringement of a method claim occurs when each step recited in the claim is performed in the practice of the accused process. Moreover – and an aspect frequently overlooked by both patentees and patent draftspeople,² each step must be performed by the same party.
A recent decision of the United States District Court for the District of Delaware (In Re: `318 Patent Infringement Litigation) has cast new light on the tension between two sometimes conflicting requirements for patent validity: “nonobviousness” and “enablement.”
In order to be valid, a patent must claim subject matter that, as a whole, would not have been obvious, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains.¹
The intellectual property enforcement team helping defend your patent, copyright, trade secret, and trademark rights against infringement
General Patent Corporation (GPC) represents clients in IP enforcement matters and licensing transactions on a contingency basis. Our Press Releases highlight our many successes over the past several years. We have also published many articles on intellectual property.
What are your patent rights?
As stated in 35 US Code 154(a)(1), every patent contains “a grant to the patentee ... of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States...”
But read these words carefully. A patent is not, as many people believe, the right of an inventor to use his or her invention; it is the right of an inventor to prevent others from using that invention — and the right to pursue legal recourse if this occurs.
Plaintiffs in patent infringement lawsuits invariably seek a permanent injunction – a court order barring the defendant from future infringement of the patent or patents in suit. Until recently, such an injunction was granted automatically to a prevailing plaintiff. No question.
The patent statute provides that damages for patent infringement begin to accrue when “the infringer was notified of the infringement.” Obviously, it is to the advantage of the patentee to establish the earliest possible date of notice.
Elliot Rais is an inventor, entrepreneur and author whose life story (which he told in his 1994 autobiography, Stealing the Borders) reads like a movie script. As a child, he experienced wartime Germany, Siberia and a refugee camp. He had little formal schooling until the age of 12, but he managed to earn an MS in Engineering (Electrical Engineering Dept.) from New York University and has had a long and interesting career.
Interview with Wayne Allyn Root of www.WinningEDGE.com
Wayne Allyn Root, a professional sports handicapper with Winning EDGE International who also happens to be the Libertarian Party’s 2008 Vice Presidential candidate, didn’t take any chances on enforcing his company’s patent. General Patent represents Winning EDGE in the licensing and enforcement of its patent, and in that regard filed a lawsuit on behalf of Root’s company, GWIN (now Winning EDGE).
GPC has several major advantages over law firms:
1. You are our top priority. GPC was formed for the sole purpose of enforcing the patent rights of small and medium sized companies and individuals on a contingency basis. GPC chooses to represent only a few, select clients. This makes you, as the contingency client, our top -- indeed, our only -- priority.
Should I write to suspected infringers or wait until I have representation? — Writing to a suspected infringer may have adverse consequences. Don’t do anything without the advice of a patent attorney experienced in patent infringement litigation.
Writing to a suspected infringer may result in estoppel or in the infringer bringing a legal action for declaratory judgment against you.
If I believe my patent is infringed, should I hurry to enforce it or should I sit and wait for damages to accumulate? — You should not sit and wait for damages to accumulate. If you sit on your rights, eventually you may lose them.
Laches and estoppel are equitable doctrines that essentially limit or preclude recovery of damages when enforcement of the patent was unreasonably delayed. For more information, read our newsletter articles on the topics of laches and estoppel.
How do you know if your patent is infringed? — You need to make sure that every limitation of at least one claim is found in the accused product or process.
Ultimately, determination of infringement of a patent requires an in-depth legal analysis that can only be done by a patent attorney. If you suspect that your patent is infringed, please contact us for a free evaluation.
What if only part of a claim is infringed and not the rest? — Unless the whole claim is infringed, there is no infringement.
For a claim to be infringed, every limitation (i.e., element or step) of the claim has to have a corresponding element (or step, if it is a process) of the accused product or process. Unless there is at least one claim that is infringed, there is no infringement of the patent.
What if my patent has not yet been allowed? — A patent has effect only after it is issued by the Patent Office.
A patent takes effect only when issued by the Patent Office, and you cannot sue for infringement of a pending patent application. However, if your claims have already been allowed by the Patent Office but the patent has not yet issued, we may take the case if we determine the allowed claims are infringed.
What if my patent has already expired? — You may still be able to collect some past damages if your patent expired less than six years ago.
U.S. patent law allows a patent owner to collect damages accrued up to six years preceding the filing of a lawsuit. For example, if your patent expired a year ago and you filed a lawsuit immediately, you may be able to claim damages for the five years preceding its expiration.
What if only a foreign company is infringing?-- If the foreign company makes and sells abroad a product covered by a US patent, there is no infringement. However, if a foreign company imports its infringing products into t8he U.S., we can pursue them here for patent infringement.
A U.S. patent cannot be infringed solely by acts performed abroad. A foreign company can freely make and sell a product covered by a U.S. patent anywhere outside the U.S. If they import infringing goods into the U.S., they may be sued here.
What is your fee structure? — Unlike law firms, we do not charge our clients on an hourly fee basis. In patent enforcement matters, we represent clients strictly on a contingency fee basis. The fee structure is based on several factors, most notably, size and complexity of the case.