How to Protect Against Patent Infringement

What is patent infringement?

Patent infringement is any unauthorized use of a patented invention—that is, making, using, selling, or importing the invention without the patent owner's permission (35 U.S.C. 271). 

This applies to all granted patents (utility, design, and plant) within U.S. territory but not to provisional applications, which have no enforceable patent protection. 

Types of patent infringement

Patent infringement generally falls within two categories: direct and indirect. Direct infringement is the most straightforward violation involving any deliberate use, production, or sale of a patented invention without permission.

Indirect infringement, on the other hand, occurs when one party helps another party infringe on a patent. There are two types of indirect infringement. 

• Induced infringement: When someone knowingly encourages or assists another party to infringe on a patent, such as giving the other party instructions to manufacture and sell the invention. 
• Contributory infringement: When someone sells or supplies a proprietary component of the patented invention, knowing it will be used for infringement. Keep in mind the component can't have substantial uses outside the patented invention itself. 

In both cases—whether direct or indirect infringement—patent holders can demand the infringer stop its operations and pursue appropriate legal action. 

Patent infringement examples

Patent infringement disputes can involve years of litigation and potentially millions in damages. Here are a few landmark cases between prominent companies. 

Apple Inc. v. Samsung Electronics Co (2011)

In a series of infringement cases, Apple claimed that Samsung copied several patented iPhone features and designs—such as its home screen layout and "tap to zoom" feature. The initial verdict awarded Apple over $1 billion in damages, though this was later reduced. 

Amazon.com v. Barnesandnoble.com (1999)

Amazon sued Barnes & Noble over its patented "1-Click" ordering system, which stored customer information to expedite online purchases. While Amazon initially won a temporary injunction stopping Barnes & Noble from using the feature, the case ultimately settled in 2002. 

Polaroid Corp. v. Eastman Kodak Co. (1986)

This infringement case centered around Polaroid's photography technology, which could develop photos in 60 seconds—a revolutionary feat for the time. Polaroid claimed Kodak had copied its technology in products sold between 1976 and 1986. The court agreed, awarding Polaroid over $900 million in damages.

What are the legal consequences of patent infringement?

The exact consequences of patent infringement depend on the case, but the court has the discretion to order these remedies (35 U.S.C. Chapter 29). 

• Injunctive relief: A court order requiring the infringer to stop making, using, or selling the patented invention. 
• Monetary damages: Financial compensation to the patent holder for losses caused by the infringement. At a minimum, this includes a reasonable royalty for unauthorized use of the invention. 
• Enhanced damages: In cases of willful infringement, courts may triple the damage award to deter future violations.
• Attorney fees: In exceptional cases, courts may award the infringer to pay the patent owner's legal fees. 

Keep in mind that patent infringement cases can settle out of court. Parties might negotiate licensing agreements, royalty payments, or other arrangements to prevent further litigation. 

How to help prevent patent infringement

In many respects, the most effective defense against patent infringement is preparation. Here are some general tips to consider. 

1. Secure a strong patent

If you haven't already secured a patent, it's highly recommended to work with an experienced attorney—such as the USPTO-registered patent attorneys through LegalZoom. 

The claims in your patent application should be broad enough to protect your invention but also specific enough to withstand potential challenges, as patents can be invalidated in court if successfully contested. An attorney is best suited to help you draft claims that balance these needs and prevent disputes early on. 

Once granted, you'll need to submit periodic renewals and maintenance fees to the USPTO. Otherwise, you may lose your patent rights. 

2. Monitor the market

The USPTO won't look out for violations, so it's up to you to watch the market in case patent infringement occurs. Here are a few strategies to consider. 

• Industry tracking: Follow competitor products, services, and technological developments in your field and related ones.
• Digital monitoring: Set up Google Alerts for relevant keywords and check online marketplaces for similar products.
• Publication review: Stay current with industry journals, trade publications, and the Official Gazette for patents. 
• Professional assistance: Consider using a patent monitoring service or working with an intellectual property (IP) law firm for ongoing surveillance.

The important part here is watching the market consistently and frequently—the earlier you detect infringement, the faster you can stop it. 

3. Document everything

If a dispute arises, you'll want to have all your documents in order to prove your ownership rights. Make sure you keep records of your invention's entire timeline: development stages, test results, initial public release, first sales, marketing materials, and anything else you have. Then, make copies and store all your documents in a secure place. 

4. Consider international protection

If you plan on sharing your invention in other countries, you'll need intellectual property (IP) international protection for each market you enter. However, the exact process depends on where you plan to make, sell, or license your invention. If you're doing business abroad, it's best to work with an IP attorney who can help you secure rights in the specific countries you're interested in—whether through direct filings or international arrangements like the Patent Cooperation Treaty (PCT). 

What to do if you find infringement on your patents

If you suspect someone is using, making, or profiting from your invention without permission, here are the steps you might take. 

1. Analyze the infringement

First, compare the suspected infringement directly against your patent claims. Look at whether they're using your entire invention or just specific elements. If you find substantial differences between their invention and your claims, it may not constitute infringement. 

2. Consult a patent attorney

This is arguably the most important step to take if you find yourself in an infringement dispute. A patent attorney will analyze your case, advise you on the best course of action, and help you move forward. While legal counsel can be an investment, it's often less costly than pursuing the wrong course of action or mishandling a valid claim. 

3. Send a cease and desist letter

A cease and desist letter is often the first formal step in addressing patent infringement. This alerts the alleged infringer of your patent rights and demands that they stop their unauthorized activities. While it might resolve the issue without court intervention, the letter must be written carefully—baseless claims or aggressive demands can backfire.

This is another reason why it's best to work with an attorney. They can help you create a letter that speaks to your rights while avoiding claims that could harm your position later. 

4. Consider licensing or settlement

If the cease and desist letter fails, this doesn't necessarily mean it's time to go to court. Sometimes, coming to an agreement with the infringer to license your invention makes more business sense. This might involve ongoing royalties, one-time payments, or other financial arrangements that benefit both parties. 

While you're not obligated to settle, this might lead to a better outcome than resorting to litigation.

5. File a patent infringement lawsuit

If negotiations fail, filing a patent lawsuit in federal court is the next and last option. This lets you pursue all available remedies—from injunctions to monetary damages. While patent litigation can be expensive and time-consuming, it's sometimes necessary to protect your rights and stop persistent infringement.

How to avoid infringing on other patents: 3 ways

If you're developing new technology or bringing products to market, it's just as important to take steps to avoid infringing on someone else's patent. Here are some points to keep in mind. 

1. Conduct thorough patent searches

First, you'll want to search for existing patents that cover similar inventions. In addition to using the USPTO's database to search for exact matches, you can look for individual components or related technologies that might include your concepts. 

It's also a good idea to work with an attorney or LegalZoom to conduct a thorough patent search—we'll help you sort through state and federal databases to check for existing patents.

2. Get legal advice

It never hurts to get legal advice early on. You can bring your patent development plans to an attorney, and they'll help you determine whether you're free to proceed or if existing patents pose risks. This might reveal potential issues that aren't obvious from basic patent searches, helping you adjust course before investing in development. 

3. Implement design-around strategies

If your patent concept potentially infringes on existing ones, you might need to adjust your approach. This could mean technical changes or even a complete redesign—the extent depends on your technology and the existing patent's claims. 

While this is easier said than done, it's far better to adjust your invention now than risk infringement later. If you can't develop a unique solution that avoids the other patent's claims, that might be a signal to pivot and explore different directions. 

FAQs

Is patent infringement a felony?

No, patent infringement cases are handled through civil litigation rather than criminal courts, so there are generally no felony charges. However, willful or deliberate infringement may lead to enhanced penalties, including up to triple damages. 

Can a patent be invalidated during an infringement lawsuit?

Yes, it's possible to invalidate a patent during an infringement lawsuit. Patents are presumed to be valid, but defendants can challenge this presumption. If the courts find the patent invalid (perhaps because it shouldn't have been granted), it becomes unenforceable.  

What are common defenses against patent infringement claims?

Common defenses include arguing that the product doesn't match the patent's claims, showing the invention is an improvement on existing technology, or challenging the patent's validity. Keep in mind that each defense requires specific evidence and justification, so it's best to consult an attorney. 

What do I do if I've been accused of patent infringement?

Contact an attorney immediately if you've been accused of patent infringement. Gather all relevant documentation about your product's development and use—and avoid interacting with the accuser until you have legal guidance. 

How does the court determine damages in patent infringement cases?

Under U.S. patent law, courts award damages based on either lost profits or reasonable royalties, whichever provides fair compensation. They may also consider testimonies from experts to determine appropriate amounts, especially in cases of willful infringement that may award triple damages.