This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
A patent entitles the patent owner to prevent others from making, using or selling the patented invention within the United States for the term of the patent. While others may make the patented invention outside of the United States, they are not permitted to sell or use the patented invention within the United States.
Similarly, others are not allowed to make the invention in the United States for use or sale outside of the United States. By bringing a court action against an infringer, the patent owner may seek both an injunction against the infringer, and the recovery of monetary damages. The scope of the injunction, as well as damages will be determined on a case by case basis and should be adequate to compensate the patent owner for the acts of infringement. Generally the damages should not be less than a reasonable royalty for the use made of the invention by the infringer.
An alternative to bringing an action against an infringer is to offer the infringer a license to make the patented invention. Such a license may include an initial base payment, as well as a royalty for each unit of the patented invention that the licensee would make, use or sell.
A patent may have method, apparatus or product claims, or a combination of all three. If the patent includes apparatus or product claims, then other persons will be prevented from making, using or selling the specific apparatus or product. If method claims are granted, others will be prevented from using the same method, but would not be prevented from making the same end product by a different method.
The United States Patent and Trademark Office is responsible for examining and issuing patents to eligible inventors. And while the Patent Office does have certain types of processes to reconsider the validity of the patent, for most practical purposes the role of the Patent Office ceases upon issuance of the patent. The Patent Office does not monitor commercial transactions for the presence of potential infringement, nor does it enforce patent rights against potential infringers once their presence is made known. It is the duty of the owners of the patent to protect their patent rights at their own expense. Moreover, the Patent Office does not guarantee the validity of a patent. A patent may be found by a court to be invalid and hence unenforceable at any time during its lifetime.
The Patent and Trademark Office additionally has processes that reconsider the validity of a patent. Two of these procedures were implemented by the America Invents Act. The first is Inter Partes Review, often referred to as IPR, which offers a petitioner the ability to challenge the validity of another’s patents before a group of administrative judges on the Patent Trial and Appeals Board. This procedure is akin to an expedited mini-trial, limited to issues associated with the validity of the patents in question based on prior art patents and printed publications. Furthermore, the IPR procedure has limited discovery and strict time deadlines. IPRs can be filed at any time, and often are requested by a party to a traditional lawsuit to adjudicate the validity of the patents in an expedited, and likely less expensive forum than a traditional trial. Since the passage of the America Invents Act, IPRs have become an increasingly popular avenue in patent disputes.
A second procedure is Post Grant Review, which available for challenging a patent for the first nine months following the Patent Office issuing a patent under the new America Invents Act. Similar to an IPR, Post Grant Reviews allow for an expedited challenge to the validity of a patent by third parties. Post Grant Review proceedings allow for broader types of challenges to the validity of a patent than are available in an IPR.