Patent It Yourself - PDF Archive

ChaPter 15 | After Your PATENT ISSUES: Use, MAINTENANCE, and INFRINGEMENT | 427
Common Misconception: If a product is not marked
“Patented” and it does not have a patent number, you are
free to copy the product, since the law requires patented
products to be marked with the legend “Patented” and the
patent number.
Fact: Patented products don’t have to be marked as such: See
“Patent Number Marking” (Section D).
Common Misconception: If a product that you intend to
make is shown in the drawing of another’s patent, you
would be an infringer of that patent if you made the product.
Fact: Only the claims of a patent determine infringement.
(See Chapters 9, 13, and Section J, above.)
Common Misconception: That which you do in your own
home or for your own personal use will not infringe a
patent that is otherwise applicable.
Fact: While “home infringement” may be difficult to detect,
nevertheless it is a form of infringement that is legally actionable
and can subject the infringer to paying damages and/or
an injunction prohibiting further infringement.
Common Misconception: If you change a patented product a
fixed percentage, say 20%, you won’t be an infringer.
Fact: The amount you’ll have to change a patented product
to avoid infringement is not subject to quantitative analysis,
but rather is determined by the breadth of the patent’s
claims. (See Section J, above.)
2. Find Out If There’s an Applicable Patent
and Whether You Will Infringe It
Suppose you do want to manufacture a specific product
or perform a specific process commercially, and you have
some reason to believe it may be covered by an in-force
patent or pending application. Under the law, you have a
duty of due care to determine whether or not you infringe
any in-force patents. Knorr-Bremse v. Dana Corp, 383 F.3d
1337 (Fed. Cir. 2004). How can you fulfill this duty and
determine whether you can proceed without infringing any
existing or future patent?
Unfortunately, there is no way to be 100% sure, because
no search can cover pending patent applications. However I
can give you some pretty specific instructions and guidelines.
If the process or product you wish to duplicate is already
manufactured or used, look at the product, the literature
accompanying it, and the packing material, to see if any
patent number is given. If you can get the patent number,
download it from the PTO website (see Chapter 6, Section
H) or order the patent from the PTO or a private service. If
the patent issued before 1995 Jun 8, it expired (or expires)
17 years from issue; if it issued after 1995 Jun 8, it expires
20 years from its filing date, or the filing date of any parent
cases from which it originated, whichever is sooner. Here’s
a rough guide that will help you make a rough determination
as to when any patent issued: Patent No. 1 issued in 1836; No.
100,000 in 1870; No, 500,000 in 1893; No. 1,000,000 in 1911;
No. 1,500,000 in 1924; No. 2,000,000 in 1935; No. 2,500,000
in 1950; No. 3,000,000 in 1961; No. 3,500,000 in 1970; No.
4,000,000 in 1977; No. 4,500,000 in 1985; No. 5,000,000
in 1991; No. 5,500,000 in 1996; No. 6,000,000 in 1999; No.
6,500,000 in 2001; No. 7,000,000 in 2006, and No. 7,500,000
in 2009, and No. 8,000,000 will issue in 2011.
If the patent is in force, things usually aren’t as bad
as they seem. Often a patent that supposedly covers a
product in reality may cover only a minor aspect of the
product (such as the housing) that is easy to design around.
Sometimes the patent doesn’t cover the product at all.
How can you be sure? The only way is to read its claims
carefully, diagramming them and preparing a claim chart,
if necessary, to know exactly what they cover. (See Section
J, above.) If what you want to manufacture is not covered
by the claims, and if you feel there is no other patent on the
item you wish to manufacture, you are free to do so.
If the product or process you wish to manufacture is
simply marked “Patented” and carries no number, your task
is more difficult. You can write to the company, asking for
the number and date of their patent, or whether their patent
is in force, but they’re not bound to answer, and you’ll have
tipped your hand by communicating with them.
You can have a (relatively cheap) search made in the PTO
or on its website of all of the patents issued to the company
in question (see Chapter 6, Section H). But there is no
guarantee that this will uncover the manufacturer, since
the patent may not be owned by the company in question;
the manufacturer may simply be a licensee. The best way to
determine whether an in-force patent is applicable is to make
a search in the relevant classes and subclasses of the PTO (see
Chapter 6), have someone make the search for you, or search
on the Google or PTO sites. The search should seek to find
any patent on the invention in question. This will involve a
greater expenditure of time or money, but at least you will be
fairly certain of your position. If, however, there is a patent
pending on the product or process, there is no way to obtain
any details, even if the manufacturer marks the product
“patent pending”; thus, not all risks can be eliminated.
If the product or process you wish to manufacture has
been known or used in the marketplace for over 17 years,
you can be pretty sure that no in-force patent will be
applicable, or that even if one is applicable, it is just about to
expire anyway.