Patent infringement is a serious issue that every business needs to know. It could cost you significant money if you address patent infringement after you launch your product. However, often, a little preplanning before you launch your product can save you time and money in the long run.
Copying someone else’s product is a red flag for patent infringement issues
You must do your due diligence for infringement issues if you copy another product. We all like to think that our products are unique. But, oftentimes, you might get inspiration for your product from your competitors. Or, you may have simply decided to copy your competitor’s product. In these situations, you should be concerned about patent infringement.
For example, you need to make sure that the product you are copying isn’t patent protected. If it is, then you need to see if your product would infringe the patent. If so, you need to change your product to avoid patent infringement.
The downside to ignoring whether the product is patented may be very costly. You may have to recall the product, pay damages and destroy the tooling. These are all very expensive and could all be avoided.
What can you do to determine if the product is patented?
The first thing you can do to determine if a product is patented is to look for any patent marking on the product. I recommend that you purchase the product. Patent owners are motivated to label their products with their patent numbers. U.S. patent laws provide patent owners with increased damages if they do so. As such, the first place you should look to see if a product is patented is on the product itself.
When you look for the patent number, be sure to look everywhere. I mean everywhere. I looked for the patent number on my Vitamix blender and had to look through a tiny crevice to find it. U.S. patent laws don’t require the patent owners to make it easy to find the patent number on the product so long as it is marked on the product. Also, look at the product packaging and any documentation in the box.
Next, you ought to conduct an assignee search. An assignee search finds all patents owned by a particular patent owner. For the product you’re copying, you need to find the owner’s legal name so you know who to search for when you do the assignee search. I often do this by looking for their registered trademark and finding the name of the legal owner of their registered trademark. Typically, companies will own their intellectual property within one entity. As such, the owner of the trademark is typically also the owner of their patents, if there is one.
How to avoid patent infringement?
After you locate any related patents, you need to assess the breadth of the claims in the patent. You can do a little bit of the homework yourself before handing it off to a patent attorney. I often advise clients to understand the basic concepts of patent infringement So that they can make better decisions in the future.
The fundamental analysis of determining the breadth of a patent is to look at the patent’s claims. The claims define the entire scope of patent protection under that patent.
Each word in the claims has a significant impact on the breadth of the claims. If your product does not incorporate just one element of the claim, your product avoids patent infringement.
In many instances, if your product infringes the patent, you can avoid patent infringement. A simple change is required that eliminates one of the elements in the claim from your product but doesn’t affect functionality. By making a simple change, you avoid patent infringement. More importantly, you avoid all of the costs associated with retooling, recalling and dealing with the other side’s attorneys.
The explanation that I provided is a simplified explanation. Analyzing patent infringement and the scope of the patent claims is quite complex and requires balancing numerous factors. If you need help, contact me to schedule a consultation.
In my other articles, you can read more about how to avoid patent infringement.
- How to avoid patent infringement?
- Basics of patent infringement
- Can you launch a product if it’s already patented?
- Can you copy an abandoned patent?
Myth alert 1: Buying a product from someone else means there are no patent infringement issues
Often, products that you sell are products that you purchase from a manufacturer. With the rise of China, many people buy products in bulk from a supplier in China. You may make a minor modification to distinguish your product from the products of others. However, the bottom line is that you are buying the product from a supplier. Doing this doesn’t mean you aren’t infringing on someone else’s patent. It just means that the supplier is selling an infringing product.
Many people call me to get advice on a cease and desist letter that they received from a patent owner. They had thought their product wasn’t infringing on someone else’s patent merely because they were buying it from someone else. Unfortunately, just because you buy a completed product from someone else doesn’t mean you aren’t infringing on a patent.
The patent owner is allowed to sue everyone up and down the supply chain. They can sue the manufacturer that might be located in China, although this may be difficult to do. They can sue the seller of the product, namely, you, which would be a lot easier. The patent allows the owner to stop others from making the infringing product and the seller from selling the infringing product.
Myth Alert 2: Seeing multiple other people sell the same product means that there are no infringement issues
Another assumption people make is that they believe there is no infringement because they see many other businesses sell the same product. That would be a false assumption. It just means that all those people selling the same product could be infringing on the same patent. Maybe, the patent owner hasn’t sent them a cease and desist letter yet.
U.S. patent laws provide patent owners with up to six years of past damages. Also, patent owners can wait indefinitely and not affect their rights to sue people that infringe on their patent.
If you need help with any of these issues, please contact me to schedule your consultation.