How do you determine if someone is infringing a patent?

Patent infringement is a two step legal analysis.  First, the claims of the patent are construed to determine, as a matter of law, what they mean.  Claim construction, or the meaning of the patent claims, is generally determined by review of intrinsic evidence pertaining to the patent.  Intrinsic evidence includes the patent itself (claims, specification, drawings), the file history comprising records of the prosecution of the patent before the U.S.P.T.O, prior art made of record during the prosecution, and file history records of any related patent applications claiming common priority to the patent at issue.  If claim meaning cannot be determined by the intrinsic evidence, extrinsic evidence may be considered.  Extrinsic evidence may include technical dictionaries or treatises contemporary in time to the priority date of the patent and relevant to the particular field or industry, industry use, prior art patents, evidence of what one of ordinary skill in the relevant field knew and/or inventor or expert testimony. 

Provisional Patent Application

Q. What is a provisional patent? A.  There isn’t a provisional patent.

Rather, one type of application for a patent that may be filed with the USPTO is a provisional patent application.  Generally speaking, a provisional patent application preserves a filing/priority date and stays alive for one year, after which the applicant may elect to convert it to a regular utility patent application, or allow the provisional application to die.  Unlike regular utility patent applications, the USPTO does not examine the provisional application.  It merely sits on the PTO shelf.  If the applicant elects to convert it to a utility case, then regular PTO examination of the case proceeds.  If the applicant elects to discontinue patenting efforts for the subject matter, the provisional application merely expires and the file remains unpublished.

Patent Litigation – an Investment Opportunity

Investors seeking new investment choices are turning to IP.  VC’s and others having made a business out of investing in start-up companies relying upon intellectual property to support new emerging technologies and business plans, report that IP is still hot as a lucrative investment choice.  Technologies such as green energy or industries likely to be receiving bail-out funds are examples of IP areas viewed as possible hot investment options.  In addition, given that many traditional investments are less desirable in the current economy, investors not previously having turned to patent assets, are opening their eyes to new possibilities, including funding patent litigation.  Patent litigation investment opportunities may include funding an individual patent litigation for a return based upon recovered damages, or establishing a fund to support a handful of cases, and in that sense creating a more diversified portfolio to spread investment risk.  Teamed with patent litigation counsel performing due diligence on patents and infringement cases, some investors are carefully selecting patent litigations in which to invest.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).