Singhwal provides parallel support through its experienced license Identifier during a claim chart, invalidity search, FTOs and any form of services where a potential license can be dug out along with valuable guidance as to what can be the next step to avail such benefits. Before we get into the licensing subject, let’s clear some basics as to what is infringement and how it may lead us to spot a potential license subject.
The patent is said to be infringed when someone without authority of the patented invention, uses, makes, sells or even offers to sell the said patented invention within a country, or even if he imports the said invention during the term of the patent. After a patent is granted by the respective patent office, as such there is no authority/ government service provides a kind of monitoring service wherein the patentee can find out the infringer or potential infringer. It is patentee‘s responsibility to find out that who are all infringing his/ her patent and to take necessary action. As mentioned in the claim charting episode , there will be a need prove the infringement that is occurring , and the burden to prove this infringement falls on the plaintiff as in the person who it is being stolen from, or is being affected from this ill-usage.
Identifying the potential infringer/licensee or the real infringer involves a lot of work out. A patentee must aware of all the relevant products of interest entering the market on their own. On the other side, the patentee can approach a professional service provider, like Singhwal, who helps them in identifying the potential licensee and infringer or who is already infringing the patent rights. Singhwal experts have rich experience in helping the client to identify the potential infringer and licensee.
‘A potential licensee is already an infringer’ to some extent this is true and hence at Singhwal, every service that may lead to finding a licensee, where its focused and validated to provide a good feed back to the client regarding the extent of the infringement, how good or bad can this suit turn out to be for him/her after filing the case.
To go ahead and assume that an infringement suit will be filed upon so and so person or entity it is always better to do an invalidity search on our own patent first to check how strong our case will be eventually. At Singhwal this is highly advised by our analysts before the case is to be prepared for a suit. Searches are conducted on the patent databases and non-patent literature database to find any supporting element to our claims and infringement suit.
The identification process involves two types. First one is that locating the infringer or manufacturer or seller of the product of interest in the market. Once the product is found in the market, it is compared with the claims of the patent thereby to ensure that the claimed feature of the invention has been used in the marketed product from third party. This is called patent to product comparison. Second one involves indentifying the third parties who are working in the same technology space. This is usually carried out by conducting a patent landscape for the technology of interest in order to find out a patent portfolio from third party. Once third party’s patent has been identified then the patent is compared with client’s patent to ensure whether the invention described in third party’s patent cannot be practised without infringing the client’s patent. This process is called as patent to patent comparison.
To understand such extents where one can force and limit the scope of the license on the infringer depends on the kind of infringement that has taken place.
There are mainly two types of infringement:
Direct Patent Infringement:
The most common form of infringement is direct infringement, where the claims of the patent literally describe the invention that is infringing, or even if the said invention performs significantly the same or similar function. . In this type of infringement a single party does the activities of all the limitations of the claim. For example, a patent covers a pen comprising cap, nib and main body/ barrel. In this case, a single party uses/ manufactures all the limitations of the claim (pen comprising cap, nib and main body) and sells the pen in the market.
Also, one must consider/ evaluate the potential infringement under doctrine of equivalence (DoE). The infringer may not perform all elements/ features of the claim and/ or perform different element which is not claimed. Hence, there is no infringement of the claim by a third party under “All Elements Rule”. However, the function of the different element used is same, it works in say way and produces the same result when compared to the claimed element.
For example, a claim related to fan which operates by connecting it directly with electricity/ current. A third party comes up with a fan and inbuilt rechargeable battery thereby defending himself from infringement as his fan is not directly connected with electricity and different from the claimed fan. Here, the function, way and result of the battery are same as of fan which is connected directly with electricity. Hence, the fan with inbuilt battery is infringed the claim under doctrine of equivalence.
Indirect Patent infringement:
There is another type of infringement which is called as Indirect Patent Infringement, which is further broken down into two types.
1. Infringement by Induction,
2. Contributory infringement
Any activity by a third party which will cause another person to infringe on the patent directly is called as Infringement by Induction.
This includes selling of parts which are only used for a patented invention, selling an invention along with specific instructions on how it should be used in a certain method that infringes on a method patent, or licensing an invention that is covered by another’s patent. The inducer must knowingly aid the infringement, but intent to infringe on the patent is not required.
Here, the person who is performing all the elements/steps of the claim is a direct infringer and liable under direct infringement. The party who is inducing another party to do all the elements of the claim is an induced infringer and liable under induced infringement. There should be direct infringement happened in order to establish induced infringement.
In assessing the induced infringement, the court always for the circumstantial evidence of intention of the infringer that may exist in the infringer’s database such as website, user manuals and guides. In case the infringer believes or defends them self that they do not intend to infringe the patent, if the user manual and product guide suggest then it is sufficient to establish induced infringement.
In the case of pharmaceutical domain, often the issues revolve around the claim related to method of use. Below is the typical method of use claim
Claim 1: A method of treating the disease X comprising administering a drug product Y to the patient in need thereof.
The pharmaceutical company only manufactures and supplies the drug product “Y”. As per the claim limitation the drug manufactures do not directly infringe the claim as they do not practice all the elements of the claim. However, the product label or instruction for use manual and their database such as website and product specific database contain the information that the drug product Y is intended to treat the disease X.
Once the drug product available in the market, the physician prescribes the drug Y for treating the disease X. Here, the physician performs all the elements of the claim. Hence the physician is liable under direct infringement. The pharmaceutical company, in most cases, aware of the existence of concern patent. In addition, their label for the drug product clearly mentions the intention of the drug which is being sold for. Here, the pharmaceutical company constantly encourages the physician to do infringement and labile under induced infringment.
The sale of material components which are especially made for the use in any patented invention, but do not have any commercial uses is called as Contributory infringement. There is a significant overlap with inducement, but contributory infringement requires a higher level of guilt. To be a contributory infringer the seller must intend the direct infringement to occur.
For example, a patent covers a pen comprising cap, nib and main body. The person “A” manufactures only nib and sell it to the party “B” who assembles nib with other pen parts and sell the final product pen. In this case, the patent claim covers a pen but not any individual parts/ components. The party “A” manufactures only the nib, a part of the pen, and supplying it to the party “B” who assembles the nib and sells the pen in the market. In this “A” contributes “B” to infringe the claimed product though the party “A” does not directly selling the infringing product.
Contributory infringement may happen within the country or across countries. US patent law recognizes contributory infringement if the substantial element or part may be manufactured outside US and export into US for manufacturing the patented product. However, UK and some other European countries require that manufacturing of the part of the patented product and its use in the preparation of final product must happen within the respective national. To establish the contributory infringement, actual sale must be happened and the piece of component is a part of the final product which is patented and infringer’s acquaintance that the component is made for use in the final product which is patented. Also, it should be noted that the element/ part is essential element of the final product/ invention. In some case, contributory infringement occurs when the component “X” does not have any other reasonable use except to use in the patented product or process. In other words, the specific component does not have any commercial value unless it combined with the other parts which are claimed in the patent.
In order to establish liability for indirect infringement, there must also be direct infringement resulting from the indirect act. Depending on these circumstances patent licensing and scope or boundaries of it are calculated and provided further to the respective clients.
Singhwal suggest mostly to find a midway between the two parties by the medium of licenses, royalties, mostly by soliciting the kinds of arrangements.
Sometimes an infringement suit ends in a cross license, where the exploitation of the subject-matter claimed in one or more of the patents each owns. Usually, this type of agreement happens between two parties in order to avoid litigation or to settle an infringement dispute. It is often seen that patents owned by different parties, cover different aspects of a given product which are essential in their own right.
Companies can express their Freedom to Operate with in the same market by having “cross licensing” among each other. When we talk about ‘cross licensing’, it would imply that neither of the parties would pay monetary compensation or royalties to the other party.
Singhwal combines all the scenarios of claim chart, invalidity search, FTOs where a Direct Patent Infringement or Indirect Patent Infringement (Infringement by inducement & Contributory infringement) is found and accordingly the scope is determined if the license has to be exclusive, cross license or plain simple a royalty is agreed upon to further the process of mutual benefit, and also in some cases just a damage fee is to be procured by the Infringer is decided by the experts at Singhwal.