What Is Patent Infringement? Direct, Indirect, and What Actually Counts
What is patent infringement? It is making, using, offering to sell, selling, or importing a patented invention in the United States without the owner’s permission while the patent is in force. Infringement is measured against the patent’s claims, not its title or general look, and it can be direct or indirect.
What counts as direct patent infringement?
Direct infringement is doing any of the covered acts yourself. Under 35 U.S.C. 271(a), anyone who without authority makes, uses, offers to sell or sells a patented invention in the United States, or imports it, infringes during the patent’s term.
That list is broader than most people expect. You do not have to sell anything. Making a patented device for internal use counts, and so does importing one. Our inventor FAQs describe what a patent protects in the same terms: the right to exclude others from making, using, offering for sale or selling the invention in the US, or importing it.
Patents are territorial. A US patent reaches acts in the United States, so protection elsewhere requires separate filings.
What is indirect patent infringement?
Indirect infringement means helping someone else infringe. The statute has two forms: inducement and contributory infringement. Both depend on another party’s infringing act.
Inducement. Under 35 U.S.C. § 271(b), a person who actively encourages another to infringe is liable as an infringer.
Contributory infringement. Under 35 U.S.C. § 271©, selling or importing a component, or a material for a patented process, can be contributory infringement. The item must be a material part of the invention, the seller must know it was especially made or adapted for infringing use, and it cannot be a staple commodity with substantial noninfringing uses.
Process patents have their own rule. Under 35 U.S.C. § 271(g), importing, selling, or using in the US a product made by a patented process during that patent’s term can infringe, unless later steps materially change the product.
How is patent infringement decided?
It is decided by comparing the product or process to each claim of the patent. The claims set the legal boundaries of protection, so a product can look like the patented invention and still fall outside them. A product can also be covered by a claim even when it looks different.
Our post on what to do when your product may infringe says a proper review checks whether the patent is still active, who owns it, and how your technical features compare to each claim. A similar patent does not automatically mean infringement.
The accused party has defenses. Under 35 U.S.C. 282, a patent is presumed valid, and the challenger bears the burden of proving invalidity. Defenses include noninfringement, unenforceability, failure to meet patentability conditions, and failure to meet the requirements of 35 U.S.C. 112.
What are the penalties for patent infringement?
A court can order the infringer to stop and pay damages. Damages must be adequate to compensate for the infringement and no less than a reasonable royalty, and the court can increase them up to three times. Costs and interest may be added.
Injunction. Under 35 U.S.C. § 283, courts may order a party to stop infringing, applying equitable principles.
Damages. Under 35 U.S.C. 284, the award can be tripled.
Attorney fees. Under 35 U.S.C. 285, the court may order the losing side to pay the winner’s fees, but only in an exceptional case.
Time limit. Under 35 U.S.C. 286, damages generally cannot be recovered for infringement more than six years before the complaint was filed.
Can you infringe a pending patent application?
Not in the ordinary sense. Rights to exclude start when a patent issues. Under 35 U.S.C. 154(d), though, an owner may later collect a reasonable royalty for activity after the application was published, if the infringer had actual knowledge of the published application and the issued claims are substantially identical to the published ones.
That is why “patent pending” is a warning, not a lawsuit-ready right. A competitor copying a pending product today may face a royalty claim later, but only under those conditions.
Are there exceptions to patent infringement?
Yes, a few. Under 35 U.S.C. 271(e)(1), making or using a patented invention solely for uses reasonably related to developing and submitting information to a federal agency that regulates drugs or veterinary biological products is not infringement. Certain products, including those made with recombinant DNA or hybridoma technology, are excluded from that safe harbor.
If you think you may qualify, get advice before relying on it.
What should you do if you may be infringing?
Evaluate the real risk first. Our post describes three paths: redesign, license, or contest. The right one depends on product value, engineering cost, launch timing, patent strength, remaining life, and litigation exposure.
Redesign. The new design must be checked against the claims, because cosmetic changes do not avoid infringement.
License. This fits when the patented technology is central to your product, or a redesign would take too long.
Fight. This can work with strong evidence of noninfringement or a patent that looks vulnerable to an invalidity challenge.
We provide freedom-to-operate, invalidity and noninfringement opinions, and we advise on patent license drafting and negotiation, as listed on our practice areas page. For how a freedom-to-operate review differs from a patentability search, see our post on patent search versus freedom to operate.
Frequently Asked Questions
What is patent infringement in simple terms?
It is using someone else’s patented invention in the US, in one of the ways the law lists, without their permission while the patent is in force.
Does a similar product mean patent infringement?
No. Infringement turns on the claims, not on resemblance. Compare the product to each claim of the patent before drawing any conclusion.
Can importing a product infringe a patent?
Yes. Under 35 U.S.C. 271(a), importing a patented invention into the US without authority is infringement during the patent’s term.
How far back can damages go?
Generally, six years before the complaint or counterclaim was filed, under 35 U.S.C. § 286. Other law may provide otherwise in specific cases.
Talk to a Patent Attorney
Sleman & Lund LLP provides patent opinions, patent licensing support, and patent preparation and prosecution, and offers free consultations for patent matters. Review our practice areas, then book a free consultation online or contact us.
Phone: (732) 795-0505
Email: sleman@patentspace.net
Office: 4400 U.S. 9 South, Suite 1000, Freehold, NJ 07728
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