Patent Maintenance/enforcement

USPTO Maintenance Fees for Utility Patents are due at 3-1/2, 7-½ and 11-½ years. (Design Patents do not have maintenance fees.) See Fee Schedule.


Enforcement and monitoring of a patent is entirely up to the patent owner to pursue, the USPTO does not enforce patents against infringement. See Monitoring Patents for Infringement.


An infringer can be sued for damages and/or an injunction for infringement of U.S. patents in the U.S. through the federal courts.


A patent owner (patentee) may also seek protection through exclusion orders from the International Trade Commission barring the products at issue from entry into the United States, as well as a cease and desist order directing the violating parties to cease certain actions under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337).


“Section 337 specifically declares the infringement of the following statutory rights to be unlawful import practices: a U.S. patent or a U.S. copyright registered under Title 17, [ and] a registered trademark . . . In cases involving infringement of these intellectual property rights, there is no injury requirement.” (Source: U.S. International Trade Commission Answers to Frequency Asked Questions.)


Infringement of Patents

Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also aver that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

http://www.uspto.gov/web/offices/pac/doc/general/infringe.htm


Defenses to Infringement/Patent Validity or Invalidity

As a defense to infringement, the infringer may try to have the patent held invalid because of potential errors made in the prosecution of the patent and patent application in areas such as prior art consideration, fraud, misrepresentation, inequitable conduct or violations of duties of disclosure. A finding of “fraud,” “inequitable conduct,” or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.

Damages for patent infringement are in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court and intentional infringement can be assessed up to three times damages found. http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_284.htm

Another defense for unintentional infringer of business method patents comes from the "First Inventor Defense Act of 1999" Subtitle C that provides a defense against charges of patent infringement for a party who had, in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of the patent, and commercially used the subject matter before the effective filing date. The defense is limited to methods of "doing or conducting business." http://www.uspto.gov/web/offices/dcom/olia/aipa/summary.htm.


International patents-IP Protection is territorial. A U.S. patent only protects patents in the U.S. To receive IP protection in other countries, you need to apply for protection in those countries.

The U.S. is a member of the Patent Cooperation Treaty (PCT) which streamlines the process for U.S. inventors and businesses to file for patents in multiple countries. By filing one patent application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 127 countries.More PCT information can be found at the USPTO website: www.uspto.gov/go/pct/.

Whether or not one should seek protection in other countries is a cost/benefit decision. Fees vary by country and maintenance fees are paid to each country and vary by country. See NonProvisional.com for more information on PCT filing.


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