Patent Litigation
Nature of Patent and Patent Rights
A patent grants the right to exclude others from making, using, offering for sale or selling or importing the invention.
Patent Infringement
Patent infringement is the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages from the infringement. Infringement is determined primarily by the comparing the language of a claim in the patent against the accused method or apparatus.
How are Patents Enforced Against Infringers?
Patents are enforced by filing a civil suit in a Federal District Court. In certain jurisdictions, such civil actions proceed under their own special procedural rules. In the litigation, the patentee must prove the infringement under the “preponderance of the evidence” standard. If the accused infringer asserts that the patent is invalid, he or she must prove such invalidity by a higher “clear and convincing” evidence standard.
Patent Marking and Patent Pending
A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.
The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent Joint Ownership
Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit provided they do not infringe another’s patent rights, without regard to the other owners, and may sell the interest or any part of it, or grant licenses to others, without regard to the other joint owner, unless the joint owners have made a contract governing their relation to each other. It is accordingly dangerous to assign a part interest without a definite agreement between the parties as to the extent of their respective rights and their obligations to each other if the above result is to be avoided.
Assignments and Licenses
The right to sue may be transferred by way of assignment and other written instruments. The owner of a patent or the rights thereunder may grant licenses to others. A patent license agreement is in essence a promise by the licensor not to sue the licensee under the terms of the license. No particular form of license is required; a license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.
Recording of Assignments
The Office records assignments, grants, and conveyances and similar instruments that it receives for recording, and the recording serves as legal notice to third-parties of the existence of such a transfer if it is recorded within three months from its date.
DISCLAIMER
Every case is unique and requires an experienced attorney to address your particular situation. Please do not consider any of the information provided here to replace a personal consultation with an experienced IP lawyer.
Call Smith and Garg today at 281.210.0010 or complete our Contact Form and let us assist you with your intellectual property law services and litigation needs.
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