Patent Infringement   Tags: intellectual_property  

A United States patent is a contract between the U.S. government and the inventor(s).  In exchange for the full disclosure of the invention, a limited monopoly is granted to the inventor(s) for a limited time.  The limited monopoly allows the inventor(s) to exclude others from making, using, selling, offering to sell, or importing the patented invention (which can be a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof).  The current duration of this limited monopoly is 20 years from the filing of a utility patent application.   

Patent infringement occurs when someone violates the rights of the inventor(s) with respect to the limited monopoly of the inventor(s).  Infringement can be either literal – meaning that the infringing product or process directly violates the terms of a claim in the patent – or infringement can be found using the doctrine of equivalents – meaning that even if the infringing product of process does not directly violate the terms of a claim in the patent, the function is the equivalent, and the protection of the patent is extended to this equivalent product or process.  There are different categories of infringement, including: direct infringement (directly violating the patent); indirect infringement (assisting another party’s direct infringement); inducement of infringement (actively and knowingly aiding and abetting another’s direct infringement); and contributory infringement (supplying another with a component that is not suitable for other uses besides infringement of the patent).

The determination of whether patent infringement has occurred involves two steps: (1) interpretation of the patent claims; and (2) comparison of the interpreted claims with the accused device/process.  The interpretation of claims is construed by the judge, not the jury, and is based on a variety of intrinsic evidence (claims, specification, prosecution history) and extrinsic evidence (dictionaries, experts, treatises).  The comparison of the interpreted claims with the accused device/process is then conducted by the finder of fact, typically a jury.  Defenses to a claim of patent infringement include patent invalidity, patent misuse, inequitable conduct, experimental use, and prior use.  The remedies for infringement include injunctions and damages (including lost profits or a reasonable royalty). 

Michael Tanenbaum is a 3L at the Georgia State University College of Law.  He holds a masters of science degree in biomedical engineering from Georgia Institute of Technology and a bachelors of science degree in biological engineering from the University of Georgia.  He is currently employed as a research engineer in the Department of Biomedical Engineering at the Georgia Institute of Technology.

The purpose of this research guide is to provide an overview of the infringement of utility patents (not including damages and remedies).  There are many intricacies to the topic of patent infringement that are not discussed in this guide.  Rather, this guide should serve as a starting point for research on this topic.  It provides primary and secondary sources on the topic, as well as electronic resources for accessing relevant materials.

This research guide is intended as a starting point for a law student or attorney to research the topic of patent infringement.  It is recommended to Shepardize or KeyCite all statutes and cases before relying on them.  This guide should neither be considered as legal advice nor as a legal opinion on any specific facts or circumstances.  If you need further assistance in researching this topic or have specific legal questions, please contact a reference librarian in the Georgia State University College of Law Library, or consult a qualified attorney.