Patent Strategy for Researchers and Research Managers, 3rd Edition

Chapter 5

Infringement and Freedom to Operate

A patent gives one the right to exclude others from an invention for a period of time; however, it does not give the patent owner the right to practice the invention. Even if a patent is granted for an invention, practice of the invention may require the use of someone else's patent. If that is the case, the other patent is said to ‘dominate’ the new patent.

It is no wonder that the word ‘infringe’ is used to describe the use of another's patented claims, infringe meaning ‘to transgress’ or ‘to encroach.’ If one must use another's patented claims in the practicing of an invention, the patent owner can legally stop the infringing activity and demand that the infringer pays damages.

Therefore, in addition to obtaining patents for inventions, an inventor must decide whether or not the invention can be practiced freely. In fact, freedom-to-operate issues can be the most challenging patent issues one can face, because many times a decision must be made without having complete information on what types of claims will issue in pending patent applications.

5.1 Types of Infringement

What constitutes actual infringement of a patent is dictated by the laws of the country in which the patent is granted. However, there are some common ways in which patents can be infringed. The most obvious type of infringement is called direct infringement. This is when someone actually practices the claims of that patent without the patent owner's permission. ...