In this explainer, we talk about patent infringement and how innovators can benefit from a patent infringement search or an evidence of use search to protect their inventions and boost IP monetization strategies.
So you have successfully patented your invention. How do you make sure that your patented technology is protected from infringers? How can you strengthen your IP monetization or licensing strategy?
First things first, find evidence of use.
In this short guide, we talk about patent infringement and how an evidence of use or patent infringement search can help you protect and maximize the value of your innovations.
A patent infringement search, also referred to as “evidence of use search (EoU)” is aimed at identifying potential infringing products or services against a particular patent. It provides evidence or indications that a product, process, or service is being used or sold in the market without the patent owner’s consent.
It is an essential tool for patent owners, especially those considering or preparing for patent enforcement or litigation, licensing negotiations, or even the sale of their patents.
To understand how evidence of use can prove patent infringement, it is necessary to understand what patent infringement entails. A patent grants the holder the exclusive right to stop or prevent others from “commercially exploiting” the invention described in the patent claims for a certain period of time. Patent infringement occurs when another party makes, uses, sells, or offers to sell the patented invention without permission from the patent holder during the validity of the patent.
Direct infringement is described by 35 U.S. Code § 271 (a) as:
“… whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”
An evidence of use search can prove infringement by showing that the product or service offered by the alleged infringer falls within the scope of one or more claims of the patent. As patent rights are territorial, each jurisdiction might define patent infringement differently.
While USC Code 271(a) describes what is called direct infringement, indirect infringement also occurs either through induced infringement or contributory infringement.
Induced Infringement occurs when a party induces or encourages another to infringe a patent, typically by actions, instructions, or other forms of encouragement. For example, if a company sells a product with explicit instructions to use it in a way that infringes a patent, that company may be liable for induced infringement, even if the product itself doesn’t directly infringe.
Contributory infringement happens when a party contributes to another’s act of direct infringement by supplying a component or means to facilitate the infringing act, but doesn’t directly commit the infringement itself.
While the contents of an EoU or patent infringement search report may vary, the core component are the claims mapping or patent-to-product mapping charts.
A claim chart is a detailed breakdown that maps specific elements of the patent claims to the features of components of the potential infringing product, process, or service.
Evidence of use can take many forms, such as:
An evidence of use (EoU) search is a systematic process that requires a deep understanding of the patent in question and the technologies and products that potentially infringe upon it.
Here’s a basic framework on how to conduct an EoU search:
Start by thoroughly understanding the patent(s). This involves studying the patent claims, which are the legally enforceable part of a patent that define the boundaries of the protection the patent offers. This is also the point where you need to visualize and break down your search requirements by listing all the relevant keywords.
To start with a more narrowed down search, identify products, services, or processes that might potentially infringe upon the patent claims.
Start with top companies and then entities within the same industry. A search of products and services from company websites can be a good place to start. A further search of e-commerce sites such as Amazon, Alibaba, etc can provide leads as to what potentially infringing products and services are being offered in the market.
If the elements claimed in the patent may have broad applications or other uses outside of its industry, list down all possible related industries and companies.
Once potential infringers have been identified and the patent claims mapped, collect evidence of use. This can involve obtaining and analyzing product manuals, specifications, white papers, marketing materials, and other publicly available information that describe the potentially infringing features or components.
In all these steps, a key factor is the interpretation of the patent claims, which can be complex and often require the input of legal and technical experts.
It is beneficial to engage patent professionals, such as patent attorneys or patent researchers, who have the technical expertise to understand the patent and the legal knowledge to interpret patent claims.
Find out how we helped a U.S. telecom giant monetize their patents.
An EoU or patent infringement search can be a time-consuming and complex process, but it is a critical part of enforcing patent rights. It is an important tool in licensing negotiations and in determining the value of a patent portfolio.
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