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35 USC 271: Infringement of Patent and the Protection of Patent Rights

By John DiGiacomo

Under US law — specifically, under 35 USC § 271 — it is unlawful to infringe a patent during its term. A patent is granted by the US Patent and Trademark Office and, once granted, it entitles the owner of the patent to the exclusive right to manufacture, sell, distribute, and/or license the patented invention. Violating this exclusive right is patent infringement. More specifically, under the provisions of 35 USC § 271, a patent can be infringed as follows:

  • By anyone who makes, uses, offers to sell, or sells any patented invention domestically, or imports a patented invention into the US — this is direct infringement
  • By anyone who induces someone else to infringe the patent — this is called contributory infringement
  • By anyone who offers to sell, sells, or imports a material component of something that is patented, knowing that the component was especially made for use in an infringement and is not a commodity suitable for a substantial non-infringing use — also contributory infringement

If the owner of a patent believes that their patent is being infringed, a civil lawsuit can be brought in federal court against the alleged infringer. In general, to prove infringement, a patent owner must show three legal elements:

  • Ownership of a valid patent
  • An act of infringement (as defined by 35 USC § 271)
  • That the infringing invention is essentially the same as the patented invention

Element number three is often the most difficult to prove, particularly if the patented invention is complex. The reason is that the patent owner must prove that the allegedly infringing invention incorporates or contains all the distinguishing aspects of the claim made in the patent. As the courts phrase it, a patentee must demonstrate that an accused device contains an element corresponding to each and every limitation of an asserted claim.

To make a decision, courts conduct a detailed analysis of the claims and elements contained in the patent and compare them to the claims and elements in the accused invention. As an example, consider a simple wooden pencil with this purposely simplified patent claim description:

  • A writing device comprising:
  • a molded strand of a mixed clay and lead;
  • glued to the center of a round wooden tube.

Now, suppose a competitor begins selling a similar device, but the competing device is square, rather than round. The competitor markets its pencil as an improvement since the pencil will not roll away while being used.

Assume that the Round Pencil Company sues the Square Pencil Company for patent infringement. In evaluating whether the square pencil is infringing, the court will conduct a “claims analysis.” The court will closely examine the patent application, any and all claim descriptions, drawings, and the prosecution history at the Patent Office. In our hypothetical, the court will note that the claim description clearly states that the wooden tube is “round” and will also note that the patent file contains drawings depicting only round wooden tubes. In the final analysis, whether the square pencil infringes on the patent for the round pencil is a close question with solid legal arguments to be made in each direction.

For an easier analysis, let’s imagine a different hypothetical. Rather than a square wooden pencil, a competitor begins selling a mechanical pencil with this overly-simplified claim description:

  • A writing device comprising:
  • a molded strand of a mixed clay and lead;
  • floating in the center of a round plastic tube; and
  • with a plunger device at one end to move the molded strand towards the other end during use.

As can be seen, the elements of this invention are not comparable to the claim elements of the patent for the wooden pencil. There would be no infringement under 35 USC § 271.

For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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