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Patent Infringement
 
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Avoiding Patent Infringement
The word "infringement" means an encroachment upon the domain belonging to a patentee that is described by the claims of her/his patent. If a patent is analogized to real property, the claims correspond to the boundary recited in the deed. Invasion of the boundary of a landowner's real estate is called trespass, while invasion of a patentee's claims is called infringement. Both are civil wrongs or "torts." Unlike a trespass, patent infringement is a statutory wrong and is governed by federal law. 35 U.S.C. 271 defines infringement as "whoever without authority makes, uses, or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent."

A determination of patent infringement involves a two-step process. First, the claims are analyzed by studying all of the relevant patent documents. Second, the claims must "read on" the accused device or process. This merely means that the device or process is examined to see if it is substantially described by the claims; in other words, the claims are tested to see whether they describe the accused infringement.

Infringement can be direct, indirect, or contributory. Anyone who makes, uses, or sells the patented invention is a direct infringer. If a person actively encourages another to make, use, or sell the invention, the person so inducing is liable for indirect infringement. Contributory infringement can be committed by knowingly selling or supplying an item for which the only use is in connection with a patented invention. Good faith or ignorance is no defense for direct infringement, but it can be for indirect or contributory infringement.

The remedies for infringement consist of:

  1. Injunctive relief,
  2. damages (including treble damages for willful infringement),
  3. attorneys' fees in some cases, and
  4. court costs.
Patent Infringement By the Government
Patent infringement, by the Government, of privately owned patents, is governed by 28 U.S.C. 1498, which provides that a suit against the Government in the U.S. Court of Federal Claims is the exclusvie remedy for patent holders who allege their patented invention has been infringed by the U.S. Government or by one acting for the Government. The primary purpose of this statute is to protect and relieve contractors from any liability for infringement by the owner when an invention is used by or manufactured for the United States. By virtue of this statute, the Government may be held liable to the patent owner for payment of the "reasonable and entire compensation" for its unauthorized use of the patent. Unlike a private party, however, the Government cannot commit the tort of "patent infringement." Governmental use of a patented invention is viewed as an eminent domain taking of a license under the patent and not as a tort.

The Government may delegate its eminent domain power over patents to contractors acting on its behalf. This is accomplished through inclusion of the "Authorization and Consent" clause in the contract [FAR clause 52.227-1]. This clause is usually included in research and development contracts and is a very significant power to grant to a contractor as it makes the Government responsible for the contractors' infringement of any patents during the course of performance of the contract; the patent owner must bring her/his action against the Government, not the contractor.

Sometimes the Government does not wish to fully delegate its eminent domain power to a contractor. This is accomplished by inclusion in the contract of the "Patent Indemnity" clause [FAR clause 52.227-3] which obligates the contractor who infringes a patent to indemnify the Government for any liability it incurs.

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