Enforcement Of Patent Rights

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. In no event should the damages 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, other persons will be prevented from making, using or selling the specific product or apparatus. 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. For all 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 financial cost of enforcing a patent against a potential infringer is highly dependent upon the complexity of the case, but legal expenses alone can easily reach $30,000-$70,000 and often reach hundreds of thousands of dollars. Very few attorneys are willing to litigate such cases for a fee contingent upon winning the case. It is, of course, possible to recoup part or all of the legal costs should the patentee win, but this prospect is never certain in advance of the court action.

It is possible to avoid the costs associated with litigation by arbitrating an infringement dispute, but arbitration requires both parties (i.e., the patentee and the potential infringer) to agree to arbitrate. Generally speaking, the chance of getting such an agreement is poor.

Patent protection offered by a valid United States patent extends only to the making, using and selling of the patented invention in the United States. A third party may make, use or sell the patented invention in any other country without infringing the U.S. patent. To obtain patent protection in foreign countries it is necessary to file a patent application in each of the countries where protection is desired. Each of these countries has its own set of rules and regulations which must be followed. Should the inventor contemplate obtaining foreign protection he should seek