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How to Guard Against Patent Infringement

Once you've received patent protection, enforcing it is mostly your job. Here's how.

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After you've filed for a patent and, hopefully, received protection for your invention, you may think that the hard part is done. Unfortunately, the most difficult part lies ahead. Receiving a patent from the U.S. Patent and Trade Office (PTO) affords your invention -- and your business -- legal protection, but the government isn't responsible for policing your patent and rooting out violators, counterfeiters, competitors, or from lapsing.

That job is mostly up to you.

Piracy, counterfeiting, and the theft of so-called "intellectual property" cost U.S. businesses upwards of $250 billion and 750,000 jobs per year, according to the PTO. Small businesses, in particular, sometimes are the bigger victims because they lack the resources of larger businesses and the expertise, such as knowing that U.S. patents don't protect your inventions overseas. Research conducted in 2005 by the PTO found that only 15 percent of small businesses protect there are aware that U.S. patents provide protection only within U.S. borders.

The following pages will detail the steps you need to take to protect patents, what the law says about protecting patents, and how to protect your inventions overseas.

Protect Your Patents

After you are awarded a U.S. patent for your invention, if someone copies your invention by making, using, offering for sale, selling, or importing into the U.S. your patented invention, that is considered patent infringement, according to the PTO. If your patent is infringed, you can sue the offending party or business in federal district court. You can ask for an injunction to stop the infringer and prevent further losses and you can also ask the court to award you damages.

The PTO doesn't have jurisdiction over questions of patent infringement. Depending upon how many patents you hold and how integral they are to your business, you may want to have an attorney on retainer to help you be prepared to fight infringers and better protect your patent in the long run.

There are also steps you can take before filing an infringement suit -- which can be a long, drawn-out, and costly procedure. You may want to contact the alleged infringer -- or have your attorney make the contact -- through certified mail. You may also want to request a meeting with management to resolve the dispute. Remember that only the courts can determine whether someone has infringed on your patents so that your contacts with alleged infringers should indicate that you believe they may be infringing on your patent.

If you must go to court to stop an infringement, be aware that the defendant may question the validity of your patent, which then becomes the responsibility of the court to determine, according to the PTO. The courts determine infringement largely based on the language of the patent claim and whether the defendant's product or good falls within the claims. If you don't agree with the courts verdict, you can appeal to the Court of Appeals, and then on to the Supreme Court.

U.S. Patent Laws

Although Congress has repeatedly attempted to reform patent laws in the last few years, the most recent domestic legislation that has impacted the patent and invention process is the American Inventors Protection Act of 1999. This law contained many provisions of interest to inventors, including the following:

  • Establishes the Patent and Trademark Office as an agency within the Department of Commerce.
  • Reduced the risk of patent infringement lawsuits against various industries, most notably financial services companies, whose "methods of doing business" had been claimed as proprietary by patent holders.
  • Requires invention promotion companies to provide complete disclosure of various aspects of their operational history, including their customers success in receiving net financial profit and license agreements as a direct result of the invention promotion services.
  • Reduces fees for international patent applications and initial maintenance fees, and authorizes the PTO director to adjust trademark fees without regard to fluctuations in the Consumer Price Index.
  • Extends the terms of patents to compensate for processing delays and delays in the prosecution of applications pending for more than three years. Provides a minimum of 17-year patent term for diligent applicants.
  • Provides for publication of patent applications 18 months after filing unless the applicant requests otherwise and certifies that the invention has not and will not be patented in another country.

Filing Patents in the U.S. and Abroad

Most experienced inventors and patent experts counsel inventors to file for a patent as soon as possible. In the United States you have to apply for a patent within one year of the time you first disclose the device or start selling it. At the conclusion of that year, a valid patent may not be obtained. Inventors should also note that a U.S. patent will not provide him or her with protection in other countries; patent applications need to be made in every country in which protection is desired. Moreover, in other countries, inventors have to apply for the patent before it is publicly disclose.

Finally, the PTO notes that in most instances, American inventors seeking to secure a patent in another country must first get a license from the Commissioner of Patents and Trademarks. This requirement is waived, however, if the filing in the foreign country takes place more than six months after the U.S. filing took place.

There are two major international patent treaties that should be studied by inventors hoping to market their products abroad. The Paris Convention for the Protection of Industrial Property, which was signed by the United States and 167 other nations, stipulates that each signing nation provide the same rights in patents and trademarks to citizens of other participating nations that it does to its own. The Patent Cooperation Treaty, meanwhile, is a patent agreement that has been signed by 124 nations, including the United States. The treaty provides for centralized filing and a standardized application format in member countries, among other means for facilitating the filing of patent applications in numerous countries.

Resources

The U.S. Patent and Trademark Office (PTO) maintains a website to allow inventors to search registered patents and published applications and to electronically file a patent application at uspto.gov/ebc/.

The PTO also maintains a website with patent information geared specifically for small businesses at uspto.gov/smallbusiness.

The PTO has also developed a website at stopfakes.gov/smallbusiness designed to help small businesses better protect their patents, trademarks, and other intellectual property.

National Inventor Fraud Center is located at inventorfraud.com.

Levy, Richard C. The Inventor's Desktop Companion. Visible Ink Press, 1995.

A report that Thomas Field wrote for the U.S. Small Business Administration, Avoiding Patent, Trademark and Copyright Problems, is available on the website of the Franklin Peirce Law Center, where he is now a professor of law.

The U.S. Small Business Administration's sponsored report on small business patents, An Analysis of Small Business Patents by Industry and Firm Size, issued in November 2008, is available at sba.gov/advo/research.

Last updated: Apr 28, 2009




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