How can you avoid infringing a utility patent?
When it comes to utility patents, would a slight product modification avoid patent infringement? How would you know how much of a change is required to avoid liability? You must understand how patent claims work in order to know how to avoid patent infringement.
Need to avoid patent infringement or defend an infringement claim? Call US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you reduce the risk of infringing patents.
Will changing the product 10% to 30% avoid patent infringement?
Part of the reason why patents are undervalued these days is the myth that you can avoid infringing a patent by changing your product by, say, 10% to 30%. Exactly what does a percentage product modification even mean? Such percentage changes, whatever they mean, will not suffice when it comes to staying clear of utility patent violations.
Let’s set the record straight. There is no such rule about any percentage modifications that would avoid patent infringement. Technically, infringement is not about how different your product is from the patent. In fact, your product may seem very different, yet still infringe. Infringement is all about the claims, and avoiding infringement is about omitting what’s in the claims (not adding or changing).
How to Understand Patent Claims
To analyze infringement, you must check each independent claim in the patent and see if each claim feature is found in your product. If an independent claim is not infringed, then logically a dependent claim cannot be infringed. In contrast, invalidating an independent claim does not necessarily invalidate a dependent claim.
Suppose a utility patent (not a design patent or a pending application) contains two independent claims: Independent Claim 1 includes a combination of features, or claim limitations, AB while Independent Claim 2 recites a combination of BC. Let’s assume you’re thinking of launching a product with features ABCD.
In the above example, your product would infringe both Claim 1 because it has A and B, and Claim 2 because it has C and D. Notice how you do not avoid infringing Claim 1 by adding features on top of what is claimed. Notice also that percentage changes in the product have nothing to do with the infringement analysis.
Let’s assume you redesign your product so that it contains features A and C only. In this case, you would avoid infringing both Claim 1 – because B is missing – and Claim 2 – because D is missing.
Would owning a patent protect you from infringement?
No, owning a patent provides no protection from infringing the patents of others. The reason is due in part to the fact that a patent does not technically provide the owner with the right to make their patented product. Instead, a patent provides the owner with the right to stop others from using their patented invention.
It is possible, and quite common, for a patent owner to infringe on other people’s patents. Here is a helpful article on the distinction between patentable and infringing.
Doctrine of Equivalents: The Gray Area
So far, we have been discussing literal infringement, but the analysis does not stop there. The doctrine of equivalents (DOE) must also be considered even if your product does not literally infringe. If a claim limitation is missing from your product (thus, no literal infringement), you still have to consider whether your product might include a feature that is equivalent to that missing claim limitation. The DOE can be a tricky gray area which deserves a separate discussion.
Can you be sued for infringing an expired patent?
Unfortunately, the short answer is maybe. A patent owner might still be able to sue on an expired patent for patent damages even if they cannot stop you from making or selling patented products. An injunction is a remedy to make someone stop doing something. So even though an injunction is unavailable for an expired patent, financial damages might still be possible for the patent owner to pursue against accused infringers.
Furthermore, there might be other patents that cover different parts, features or combinations found in your product. The only thing certain about an expired patent is that the dead patent cannot be used to obtain an injunction against you. However, this does not automatically mean you’re free and clear to sell products once covered by the expired patent.
A hypothetical may help.
Hypothetical: Can you sell a product covered by an expired patent?
Suppose a patent claiming a combination of three features A, B and C has expired. You now wish to sell a product containing ABC. You can be certain that the owner of the dead ABC patent will not be able to enforce the expired patent against you (unless they’re able to revive the patent by, for example, paying a late maintenance fee). However, there may still be live, unexpired patents covering other features and combinations thereof.
For example, suppose there’s a patent claiming AB and another patent claiming BC and both patents haven’t yet expired. Your product would infringe the AB patent and the BC patent since your product contains those claimed features. The same would be true if there were unexpired patents claiming, for example, A alone or B alone.
Consider a Freedom-To-Operate Search
As shown above, it’s possible that a product covered by a dead patent may still infringe other live patents. If you want to reduce uncertainty and gauge the risk of patent infringement associated with a particular product, consider a Freedom-To-Operate (FTO) search which would seek to uncover live patents claiming features found in your product.
Even if you find that your original version of a product may infringe certain patents, the benefits of an FTO search include the possibility of designing around those patents by modifying your product to omit certain features. You may end up with a safer updated version of your product carrying a lower risk of infringement.
Need to avoid infringing a patent?
Are you thinking of selling a product that is close to a competitor’s patent? Are you worried about patent infringement? Contact registered US patent attorney Vic Lin anytime at vlin@icaplaw.com or call (949) 223-9623.
Let’s see if we can help you form a game plan to minimize risk and maximize peace of mind.
