In the fast-paced world of innovation and business, companies often encounter complex challenges surrounding intellectual property rights, especially patents. Imagine that one regular Tuesday afternoon, you receive a letter or email from an unfamiliar company accusing you of patent infringement. The letter might demand that you immediately cease production or even suggest a costly licensing agreement. Facing these accusations can feel as daunting as an IRS audit—frustrating and often confusing.
In this guide, we will cover seven effective defenses to patent infringement that could be valuable for your business. While consulting a skilled patent attorney is crucial, these insights can help you assess potential defenses that might protect your company.
1. Confirm the Patent’s Validity: Is There a Patent at All?
The first step in defending against a patent infringement accusation is to confirm whether there is a legitimate patent involved. Often, companies receive detailed infringement claims referring to a patent application, not an issued patent. If the accuser only holds a patent application rather than an actual patent, then there’s no infringement because patent rights don’t apply until the patent is officially granted.
To verify, look at the document’s first page. You should see a specific U.S. Patent number and a clearly defined issue date if it’s an officially granted patent. If the document references only an application or filing date without an official patent number, you have a valid argument that no infringement has occurred. Until a patent is formally issued, there is no legal protection to enforce.
2. Check Patent Expiration: Is the Patent Still Active?
The second defense is to determine whether the patent has expired. Utility patents, which are the most common type, are valid for 20 years from the filing date. Some patents may have additional days added to their terms due to processing delays (often called “extension days”), which can extend the validity period slightly. However, this extension is typically minimal.
If the patent has expired, it’s no longer enforceable. By confirming the filing date, you can quickly see if the patent is still within its valid term. This simple check could save you significant time and resources.
3. Prior Patent Ownership: Do You Hold a Pre-existing Patent?
Another strong defense is to determine whether your business already owns a pre-existing patent that covers the same or similar product or process. If your patent was filed before the patent that the accuser claims you are infringing, it could invalidate their claims.
This situation arises when your patent covers the same technology or innovation as the accuser’s, and your filing date predates theirs. Since U.S. patent law generally follows a “first-to-file” rule, the patent that is filed first usually has priority. You could argue that your patent supersedes the accusers, making their patent claims invalid.
4. Prior Sales Defense: Was Your Product on Sale Before Their Patent Application?
If you were selling your product more than one year before the accuser filed their patent application, then the accuser’s patent may be invalid. This is known as the “on-sale bar,” which prohibits patents from being granted if the product is commercially available before a certain date.
For example, if your product was listed on Amazon or other platforms for over a year before the filing date of the alleged patent, this history could serve as a solid defense. Digital sales records or other forms of public documentation can help demonstrate prior sales and invalidate the patent based on this timeline.
5. Published Description Defense: Was Your Product Publicly Documented Before Their Patent?
This defense is similar to the defense of the prior sales but involves a printed publication instead of direct sales. If your product or its process was described in a printed publication more than a year before the accuser’s patent filing date, it could also invalidate their patent.
Examples of valid publications include catalogs, trade publications, newspaper articles, or magazines that publicly describe your product in sufficient detail. If you can show that your product or process was described in one of these sources before the accuser’s patent application date, this could effectively bar their patent from holding up in court.
6. Public Use Defense: Was Your Product in Public Use Before the Patent Filing?
If your product was in public use over a year before the patent application filing, this could serve as a defense against infringement. Public use refers to any instance where the product or process is openly displayed or used, allowing the public to observe its functionality.
A classic example is a restaurant appliance being used openly in a restaurant. If this appliance was used publicly and visibly over a year before the patent filing, it may render the patent invalid. Publicly displayed products are typically not eligible for patent protection if they’ve been in use for over a year.
7. Commercial Use Defense: Was the Product Used Commercially in a Non-Public Setting?
The commercial use defense is similar to the public use defense but applies to instances where the product was used in commerce privately, such as within a factory setting. If your product or process was used in a commercial environment, even without public visibility, this can serve as a defense if the use began over a year before the patent filing.
For instance, if a piece of machinery or a proprietary process was used internally within your business over a year before the patent was filed, it could act as a bar against the accuser’s patent claim. This defense covers cases where the product or process may not have been visible to the public but was actively in commercial use.
Conclusion: Leveraging Your Defenses Against Patent Infringement
Facing a patent infringement claim is a serious matter, but these seven defenses can offer strong initial protection for your business. Remember, each case is unique, and consulting with an experienced patent attorney is essential to determine the most effective strategy. However, by understanding these defenses, you can be better prepared to challenge allegations effectively and potentially avoid costly litigation.
Key Takeaways:
- Confirm the patent’s validity: Ensure the accuser holds an issued patent, not just an application.
- Check the expiration: Expired patents are unenforceable.
- Prior patent ownership: If you filed a patent first, their claims may be invalid.
- Prior sales defense: Sales over a year before the patent filing can invalidate claims.
- Published description defense: Public documentation of your product over a year earlier can be used as evidence.
- Public use defense: Public use of your product over a year prior may bar patent claims.
- Commercial use defense: Internal commercial use can also protect against later patents.
By proactively employing these defenses and working closely with legal experts, you can protect your business and uphold your innovations in a challenging patent landscape.
