How can a patent protected product be infringing?

Over the course of my 20 years as a patent agent, there are some questions that clients ask that come up repeatedly. Many of these have to do with their lack of understanding of the patent process. I’ve collected a few of those and will be, in the coming weeks, sharing with you a series of posts sharing these questions, and providing my (well-rehearsed) answers. I hope this will help both the innovators better understand the patent system, and maybe help other patent practitioners with good examples to provide to their own clients.

Our first question has to do with the distinction between patent protection and patent infringement.

So, Mr. Entrepreneur has developed a new product, and in order to protect that product, he went to a certified patent agent and made sure to obtain a patent. Happy with his windfall, Mr. Entrepreneur started manufacturing and marketing his product, until one fine day, a letter arrived in his office warning him that he is infringing someone else’s patent. At first, Mr. Entrepreneur thinks “this must be a mistake! I have a patent for that product!”.

Well, it is not that simple. Actually, patent law does allow a situation where you have a product protected by a patent granted by the patent office, but at the same time that product infringes someone else’s patent rights.

Surprised? So are many of my clients!

So, when does this happen? How do you identify this situation? And what do you do to overcome it?

Let’s start with an example that will hopefully clear things up:

Assume that “Ray Automobiles LTD” has a patent for a car, registered in the US. In the claims of this patent, a car is defined as a vehicle having four wheels, and four doors. As a result, sale, in the US, of any vehicle having four wheels and four doors, infringes Ray’s patent.

Now, Kacey from the company “Girls Rule Cars” has developed a car with a convertible roof. Kacey worked hard to develop the mechanism required to enable the roof to open smoothly, and to ensure that the roof doesn’t leak when it is closed and doesn’t overheat in the sun. Kacey filed an application for a patent for her convertible car, and since the car was novel, and included an inventive step (solved various problems), the patent application describing Kacey’s car met the USPTO requirements and was registered as a US Patent.

When Kacey manufactured and sold a family convertible, which was a car with four wheels, four doors, and a convertible roof, she received a cease-and-desist letter from “Ray Automobiles LTD” indicating that her car was infringing their patent. This happened because while being novel and inventive, Kacey’s car is a vehicle with four wheels and four doors, thus meeting the requirements of the claims in Ray’s patent.

By contrast, when Kacey manufactured and sold a sports convertible, which was a car with four wheels, two doors, and a convertible roof, she was not threatened by “Ray Automobiles LTD” because the sports convertible did not meet the requirement of having four doors, listed in the claims of Ray’s patent.

This situation can be visualized using the following Venn diagram.

The red circle represents vehicles with four wheels and four doors, meeting the claims of Ray’s patent. The green circle represents vehicles with a convertible roof, meeting the claims of Kacey’s patent. The family car manufactured by Kacey is in the intersection of the two groups, and thus received a “love letter” from “Ray Automobiles LTD”. The sports car is only in the green circle, and thus did not trigger any legal action.

The reason this situation can happen is that the requirements for patent eligibility do not include “non-infringement of existing patents”, and patents are typically improvements of existing products. As such, often a patent eligible product will nonetheless infringe another prior patent. The fact that the USPTO or any other patent office has approved a patent application and registered it as a patent, does not imply that a product designed in accordance with that patent would not infringe another patent.

How does one overcome the problem?

Usually, this problem is overcome by cross-licensing of the patents. Returning to our previous example, Ray would license Kacey to use his patent for her to manufacture her convertible family car, and at the same time Kacey will allow Ray to use her patent, so he can also manufacture convertible cars.

I hope this clarifies things a bit!

If you have any other questions with regard to this post, or any other questions relating to the patent world about which you are curious, let me know in the comments!