What is a patent infringement?

Patents give the owner the right to exclude third parties from using and exploiting what is protected by a patent. The sope of the protection of a patent is set out and limited by the patent claims. Infringing a patent means, that someone is offering a product or using a method that makes use of every feature or every method step of a patent claim.

What for is a patent infringement study (opinion)?

An patent infringement assessment will give either

  • a patentee a legal opinion if his patent is infringed by a product or a service that a third party is manufacturing, advertising, selling, exporting or importing. On the outcome of the patent infringement opinion the patentee for example may decide to start actions such as a cease and desist letter or filing a law suit against the infringing party.
  • a legal entity who wants to manufacture, advertise, sell, export or import a product or a service a legal opinion if the product or service would infringe the patent rights of some else.

Freedom-to-operate study

The patent infringement assessment may be restricted to a certain patent, of which the client is already aware or it may be preceded by a patent search that looks for possibly infringing IPR. If such a search is done before a development is started it is called a freedom-to-operate study. Such a search and an assessment of the search result may save expenses on R&D that are otherwise spend in vain, as the developed product may not be oferd and sold. It may also help to design around a third partie's blocking patent.

Patent clearance study

In the event the patent infringement study is done just before a product is delivered, it is usually called a patent clearance study and forms part of an official product clearance study. Even if there was a freedom-to-operate search first, a patent clearance study is advisable as in the meantime between development start and development end new third partie's patents or patent applications may have been published.

How is a patent infringment study performed?

The patent claims are analysed and compared with the possibly infringing product or method. Herefore the claim is divided into features. A patent infringement exists only if the possibly infringing product/method makes use of all features. In the event the features claimed in the patent and the features of the possibly infringing product/service are identical there is no question that the possibly infringing product / method is making use of the claimed feature.

However, very often the question arises if a feature of a patent claim and the feature of a possibly infirnging product/method that are "are similar enough" to constitute an infringement or are considered as different features. The claims have to be interpreted how a person skilled in the art would have considered both features as equivalents when solving a technical problem with the features of the claim.

For example if the patent claims a "detachable connection of two metal sheets then connecting the metal sheets by screws and connecting the metal sheets by rivets may be considered equivalent, as rivets may be removed and refixed again. Connecting the metal sheets by soldering propably would be outside the scope of a detachable connection. As the claim interpretation depends on the teachings in the patent specification, in another patent connecting metal sheets by screws and connecting metal sheets by rivets may be considered to be not equivalent measures. Therefore it is indispensabel to ask a patent attorney to interprete claims in the light of the description.

For what purposes are infringment studies recommanded?

As the infringement of patent rights may even decide on the commercial existence of a company, a patent infringement opinion may be necessary to assess the value of a

  • Sale
  • Purchase
  • Licensing
  • Taxes
  • Funding
  • Financing