Patracode provides parallel support through its experienced license Identifier during a claim chart, invalidity search, FTOs and any form of services where a potential license can be dug out along with valuable guidance as to what can be the next step to avail such benefits. Before we get into the licensing subject, let’s clear some basics as to what is infringement and how it may lead us to spot a potential license subject.
The patent is said to be infringed when someone without authority of the patented invention, uses, makes, sells or even offers to sell the said patented invention within a country, or even if he imports the said invention during the term of the patent. As mentioned in the claim charting episode , there will be a need prove the infringement that is occurring , and the burden to prove this infringement falls on the plaintiff as in the person who it is being stolen from, or is being affected from this ill-usage.
‘A potential licensee is already an infringer’ to some extent this is true and hence at Patracode, every service that may lead to finding a licensee, where its focused and validated to provide a good feed back to the client regarding the extent of the infringement, how good or bad can this suit turn out to be for him/her after filing the case.
To go ahead and assume that an infringement suit will be filed upon so and so person or entity it is always better to do an invalidity search on our own patent first to check how strong our case will be eventually. At Patracode this is highly advised by our analysts before the case is to be prepared for a suit. Searches are conducted on the patent databases and non-patent literature database to find any supporting element to our claims and infringement suit.
To understand such extents where one can force and limit the scope of the license on the infringer depends on the kind of infringement that has taken place. There are mainly two types of infringement:
Direct Patent Infringement:
The most common form of infringement is direct infringement, where the claims of the patent literally describe the invention that is infringing, or even if the said invention performs significantly the same or similar function.
Indirect Patent infringement:
There is another type of infringement which is called as Indirect Patent Infringement, which is further broken down into two types.
1. Infringement by Induction, 2. Contributory infringement
Any activity by a third party which will cause another person to infringe on the patent directly is called as Infringement by Induction.
This includes selling of parts which are only used for a patented invention, selling an invention along with specific instructions on how it should be used in a certain method that infringes on a method patent, or licensing an invention that is covered by another’s patent. The inducer must knowingly aid the infringement, but intent to infringe on the patent is not required.
The sale of material components which are especially made for the use in any patented invention, but do not have any commercial uses is called as Contributory infringement. There is a significant overlap with inducement, but contributory infringement requires a higher level of guilt. To be a contributory infringer the seller must intend the direct infringement to occur.
In order for there to be liability for indirect infringement, there must also be direct infringement resulting from the indirect act. Depending on these circumstances patent licensing and scope or boundaries of it are calculated and provided further to the respective clients.
Patracode suggest mostly to find a midway between the two parties by the medium of licenses, royalties, mostly by soliciting the kinds of arrangements.
Sometimes an infringement suit ends in a cross license, where the exploitation of the subject-matter claimed in one or more of the patents each owns. Usually, this type of agreement happens between two parties in order to avoid litigation or to settle an infringement dispute. It is often seen that patents owned by different parties, cover different aspects of a given product which are essential in their own right.
Companies can express their Freedom to Operate with in the same market by having “cross licensing” among each other. When we talk about ‘cross licensing’, it would imply that neither of the parties would pay monetary compensation or royalties to the other party.
Patracode combines all the scenarios of claim chart, invalidity search, FTOs where a Direct Patent Infringement or Indirect Patent Infringement (Infringement by inducement & Contributory infringement) is found and accordingly the scope is determined if the license has to be exclusive, cross license or plain simple a royalty is agreed upon to further the process of mutual benefit, and also in some cases just a damage fee is to be procured by the Infringer is decided by the experts at Patracode.
