March 2008

Indirect Infringement of Patents

Patent rights give an inventor the right to exclude others from making, selling, importing, or otherwise profiting from an invention without the inventor’s permission. Doing so is considered an infringement on the rights of the patent holder, and he or she may be able to recover a remedy.

Indirect Infringement

Indirect patent infringement occurs when someone induces another person to commit an act of patent infringement by actively soliciting or assisting in such infringement. One basic requirement for liability for inducement to infringe is that there must be an actual case of direct infringement by another party. For example, offering to sell the parts and instructions necessary to build a patented invention does not in itself amount to inducement to infringe. If someone accepts the offer to buy these parts and subsequently builds the invention, however, the seller of the parts has induced the act of infringement.

Another form of indirect infringement is contributory infringement. If a person sells, offers to sell, or imports an important part of a patented invention that has no substantial use except for in the patented invention, they may be liable for contributory infringement. As with inducement to infringe, liability for contributory infringement depends upon an actual act of infringement taking place. Moreover, the seller of the part must know that the person to whom the item being sold intends to use it in such a way that a patent will likely be infringed.

Reexamination of Patents

After a patent is issued by the United States Patent and Trademark Office (USPTO), the discovery of prior art or publications not noticed prior to the patent’s issue may raise questions as to the validity of the issued patent. In such a case, a patentee or a third party may file an application for reexamination of the patent in the USPTO. For a third party, reexamination provides a lower cost alternative to a conventional lawsuit for challenging the validity of a patent. If the third party is an unsuccessful infringement defendant, a reexamination that results in the invalidation of a patent may provide vindication of that defendant’s rights despite the results of the court case. For the patentee, the reexamination process may reveal the need to narrow a patent’s claims in order to be in a better position to fend off a challenge to the patent’s validity. In addition, the USPTO may take it upon itself to reexamine a patent without it being requested by the patentee or a third party.

The patent reexamination process has two stages. At the outset, the USPTO determines whether a substantial new question of patentability is evident from the prior art or printed publications. If a need for reexamination is found, the patentee is given two months to provide a response to the USPTO, and a third-party reexamination requester may reply to the patentee’s response. In addition, the patentee is allowed to propose amendments to the patent claim or claims at issue as long as the amendments do not broaden the scope of the claims. When the patent reexamination process was initiated in 1980, the process was an ex parte process, meaning that once the process had been initiated and the parties’ responses were filed, only the USPTO was involved in the review of the reexamination application. Since 1999, an inter partes process has been allowed at the election of the applicant.

In an inter partes reexamination, the USPTO will send to the reexamination requester a copy of any communication that it sends to the patentee about the patent at issue. Each time a patentee files a response to any action by the USPTO concerning the challenged patent, the reexamination requester may file one response. In an inter partes reexamination, either party may appeal an adverse decision, in contrast to an ex parte reexamination, where only the patentee may appeal an adverse decision.

Although the inter partes reexamination procedure allows greater participation by the party challenging the patent, there are several drawbacks to the procedure. The application fee is nearly four times greater than for an ex parte reexamination. In addition, in an inter partes reexamination, the reexamination requester may not remain anonymous as in ex parte proceedings. Finally, although the inter partes requester is entitled to appeal an adverse decision, once the appeal process has been exhausted, an adverse decision against the requester is considered absolutely final and the requester may not bring a court action to challenge the same patent.

Once the reexamination process is completed for either an ex parte or inter partes reexamination, the Director of the USPTO issues and publishes a certificate that cancels any claim of the patent that is determined to be unpatentable, confirms any claim determined to be patentable, and incorporates any amended or new claim proposed during the reexamination process that is determined to be patentable.

Trademark Registration

While it is not necessary to register a trademark, owning a federal trademark registration provides many benefits. Such a registration puts the public on notice to the registrants claim of ownership of the mark, gives the registrant legal ownership of the mark and the ability to bring action concerning the mark in federal court. Registering a trademark can also serve as a basis for obtaining registration in foreign countries and the ability to prevent the importation of infringing foreign goods by filing the U.S. registration with the U.S. Customs Service.

Intent to Use Basis or In Use Basis

Trademarks can be filed on either and intent-to-use basis or on an in-use basis. Under the intent-to-use basis, the applicant has not yet actually used the trademark in commerce but can claim in good faith that they plan to do so later. In this case, the applicantant must later file a second form with the United State Patent and Trademark Office before the mark can be fully registered. To file a trademark under an in-use basis, the applicant must have used the trademark in commerce.

Trademark Registration Fees

The United States Patent and Registration Office charges a filing fee per class of goods and services. Any filing fees are considered “processing fees” and are not refundable even if an application is a rejected. Therefore, all necessary steps to ensure that a trademark is eligible should be taken before an application is submitted.

Trademark Symbols

The “(r)” or “®” may be used if a trademark is registered with the United States Patent and Trademark Office (USPTO). The “TM” symbol may be used for a product that is not yet registered with the USPTO. The “SM” symbol may be used with a service that is not yet registered with the USPTO.

Symbols that May be Used Without Registration

A party may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to that party’s claim. It is not necessary for the party to have filed an application with the USPTO. Although there are no federal regulations governing the use of the designations “TM” or “SM” with trademarks, use of those symbols may be governed by local, state, or foreign laws so the laws of the pertinent jurisdiction should be consulted prior to use of either “TM” or “SM.”

Federal Registration Symbol

The federal registration symbol “(r)” may be used only after the USPTO actually registers a mark. It may not be used while an application is pending. The registration symbol may be used with a mark only on or in connection with the goods and/or services that are listed in the federal trademark registration.

Once a federal registration is issued, the registrant may give notice of registration by using the registration symbol “(r)” or the phrase “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”

Copyright and Best Edition

Copyright law requires that copies deposited in the Copyright Office be of the “best edition” of the work. The best edition of the work is the edition the Library of Congress determines is the most suitable for its purpose.

When multiple editions of a work have been published, the one of the highest quality is generally considered to be the best edition. When judging quality, The Library of Congress adheres to specific criteria. A criterion by criterion comparison of the two editions is made, and the first edition that fails to satisfy a certain criterion is deemed of inferior quality and will not be the acceptable deposit.

Potential depositors may request authorization to deposit copies other than the best edition of a given work by requesting “special relief” from the deposit requirements. All requests for special relief should be in writing and should state the reason why the applicant cannot send the best edition and what the applicant wishes to submit instead.