A patent has the potential to have various different litigation issues during its life which could impact upon it. Patents that have had these issues can be found via PatSnap. Some of these main issues are given below:
An infringement case can be brought against someone who is thought to have manufactured, imported, used or sold technology that has been defined in a patent. This type of case can only be brought about in the country that the patent was filed in and for this case to be successful, the potential infringer's technology must fall within one or more of the claims of that patent. It will fall within one of the claims of the patent if all of the claim's elements are present in the technology or a doctrine of equivalence has been deemed applicable. If an infringement case is successful the way that the defendant may end up suffering is that they will have to pay royalties to the plaintiff (this includes the damages as well as court filing fees and related litigation expenses), a post-trial injunction (which is an order that prevents the patent defending from infringing the patent now and in the future) and even jail.
False Patent Marking
A product can be falsely marked if it is marked as patented when it is in fact not. A legal case can be brought against someone for falsely marking a product if someone else feels that they have been competitively injured (meaning they feel that their ability to operate in the market has been negatively impacted) by this being the case. If the defendant in this type of case is unsuccessful, they can be liable to have to pay a fine. In the USA, prior to 2012, there was no competitive injury requirement for a plaintiff, so anyone could file false patent marking lawsuits, a tactic that was used regularly by so-called "patent marking trolls" who weren't affected in any way by the false patent marking.
By definition, for a general legal case, the judgment is described as "declaratory", if it determines the rights of the parties without ordering that anything is done or any damages are awarded. In the case of patent infringement cases, this usually happens when an alleged infringer wants to defuse the situation regarding the product or service that may be considered integral to their business. The way that this could happen in a patent infringement case is that once the patent owner suspects someone of infringing one of their patents, they could simply wait before actually filing the lawsuit. During this time, damages could continue to accrue. As well as this, the alleged infringer can do nothing during this time if there was no declaratory judgment. Here declaratory judgment would allow the alleged infringer to file a lawsuit to resolve the situation and remove the uncertainty regarding this situation.
Correction Of Inventorship
A correction of inventorship on a patent may be necessary if someone believes that the inventors listed on a patent are incorrect. An inventor is an individual who has contributed to an enabling concept where an enabling concept is a concept with enough detail that someone reasonably skilled in that domain would be able to bring it to life. As well as this, to be listed as an inventor on a patent, your inventive contribution must appear in at least one claim of the patent. When someone files a case deeming that the incorrect inventors are listed on a patent, there are two main reasons for this. The first is that someone believes they should be an inventor on a patent and want their name to be added to the inventor list for that patent. The second is that someone suspects that someone who is claimed to be an inventor on the patent isn't actually an inventor and if this is found to be the case the patent could end up being invalidated.
Patent Term Adjustment
The term of a patent may be extended under specific circumstances. This varies between jurisdiction but this happens in general if there is a delay in the processing of the patent. For the USPTO, there are four types of delay that can occur which are similar for other jurisdictions as well. The first type of delay is if the USPTO does not reply within the time period that they provided. The second type of delay is if the USPTO takes longer to process then the usual 3 year processing time. The third type of delay occurs in the event of secrecy orders or interferences. The fourth type of delay occurs if the applicant themselves fails to respond within 3 months of a mailing from the USPTO.
A patent amendment case may be filed if someone who has had their patent rejected by the patent office does not think this decision was correct. The patent's office defense, in this type of case, is that they suggest the amendments that would have needed to be made to the patent before it could have been granted. These amendments could be made to any part of the patent. If the patent office is successful in this case, then the plaintiff is liable to have to award damages to the patent office for filing the case and have to wait longer for their patent to be granted in the future once they have made the required amendments.
In a patent infringement case, a counterclaim can be filed against the plaintiff in the form of an invalidity case. In this type of case, the claimed infringer will claim that the plaintiff's patent is invalid in order to defend their case in the trial. There are various different ways that a patent can be invalidated, these are as follows. One way is that the invention claimed in the plaintiff's patent is not considered to be novel, i.e. it can be found in prior art. Another way is that the claims of the patent don't actually comprise what can be considered an invention. Another way is that the patent has not been sufficiently disclosed, which is an issue since it is given under law that for a patent to be granted, all the knowledge and information regarding the invention claimed within it is publicly disclosed. A final way is that the inventors listed on the patent are wrong and this issue is described in the correction of inventorship section above. If the patent is found to be invalid then the plaintiff will not only have their patent invalidated but also will have to pay damages to the defendant in the infringement case.
A supplementary protection certificate (SPC) is a special type of intellectual property right that extends the duration of particular rights for a patent. This is specific to Europe and is available for such things as drugs and herbicides which are regulated, pharmacologically active agents. An SPC usually has a maximum lifespan of 5 years but can be increased under specific circumstances. An SPC being granted can be thought of as a legal case because the owner of the specific patent that they want an SPC to be granted for can file a case against the patent office who rejected this. If the patent owner is successful in this case, an SPC will be granted for the patent as well as possibly receiving damages from the patent office.
It can be the case that the defendant in an infringement case can file a counter-case against the plaintiff which forces them to reveal any previous licensing deals they have for one of their patents. In these disclosures, not only are the licensees for the patents given but also the royalty rates the licensees are paying for the licenses. This can be particularly harmful to patent trolls who license out their patents without any interest in actually taking the ideas given in the patent to market. This can cause them to have fewer licensees for their patents in the future and become a significantly weaker business. As well as this, if they lose this counter-case they are likely to have to pay damages to the defendant in the infringement case. On the other hand, if they win they are likely to receive damages from the defendant as well as not having to disclose any licensee information.