For 140 years, patent holders have been able to protect their patents via the doctrine of “contributory infringement.”  This doctrine, codified into law at 35 U. S. S 271(c), protects against patent infringement by a third party. 

What’s the contributory infringement law?

"Whoever imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer."

What does this mean?

Contributory infringement occurs when a party sells a component that he knows can only be used in conjunction with another component or collection of components and if such were sold together would constitute patent infringement.

What would be an example of contributory infringement?

Party A sells a cell phone that will only work with Party B’s special component.  Sold alone, Party A’s cell phone does not violate any patents because it has less elements than patented cell phones.

Party B’s special component can only be used with Party A’s cell phone.  It has no other use.

If Party A’s cell phone and Party B’s special component were sold together, it would constitute patent infringement.

What do I need to prove to recover for contributory infringement?

There are three elements that must be shown to recover for contributory infringement:

1.      Sale

2.      of material component of a patented invention

3.      knowledge that such component has been especially made for use in the infringement of a patented invention

How do I prove “knowledge?”

Courts will infer knowledge if there is no other commercial use for the component.

What are the defenses to contributory infringement?

Infringers will attempt to show that their component has substantial non-infringing use and are “staples of commerce.”  In other words, infringers will attempt to show that their components have lots of non-infringing uses.

Special note:  third party requirement

To prove contributory infringement, you must show that direct infringement occurred.  In other words, action by a third party was, in fact, direct infringement.

You don’t actually have to bring a lawsuit for direct infringement, but you must show that it occurred. 

In other words, contributory infringement is not a stand-alone infringement.  If you do not have direct patent infringement, you do not have contributory patent infringement.

What is inducement of patent infringement?

Inducement of patent infringement is the act of instructing, directing, or advising a third party as to how to infringe a patent.

In our example, if Party B sells a special component with instructions on how to use it with Party A’s cell phone, inducement of infringement has occurred.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law.  We, at Cutler & Donahoe, LLP, focus on our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.

At Cutler law firm, we know that you work long and hard to develop your products.  And then you go through the rigorous process of patenting them so that you can receive the compensation you deserve for your work.  But your efforts cannot stop there; you must enforce your patents to receive just compensation. 

Here is some basic information that will help you to determine whether your patent has been infringed and what you should do if you believe that it has been infringed:

Types of patent infringement

Direct Infringement

A single actor infringes a patent.  The single actor performs “each and every element” of the asserted claim.

Induced Infringement

Under an agency-like doctrine, a direct infringement includes all acts of a single actor and all those controlled by that same actor.  In other words, the single actor controls others, who in conjunction with one another infringe a patent.

Indirect Infringement

Indirect infringement occurs when a party supplies a product that can only be used to create a patented product. 

Why you need to take action now if your patent has been infringed

Doctrine of Laches

If you do not seek help immediately upon discovery of patent infringement, your claim may be barred by the doctrine of laches.  The equitable defense of “laches” is based upon the premise that you “slept on your rights” and therefore aren’t entitled to recover compensation for any alleged patent infringement.

The “infringing” party may assert that it relied on your lack of action and is in a worse place because of your failure to act.  In other words, they invested more time and money is their product because you didn’t object to the alleged infringement.  Therefore, you are barred from being awarded damages that you might have received had you brought your case in a timely manner.

The Statute of Limitations

There is a specific time period set by law in which any legal claim must be filed or be forever barred.  This is called the statute of limitation.   If you fail to bring your claim within the applicable statute of limitation, you will never be able to file your claim.

If you allow the statute of limitations to pass before filing your claim, you will receive no compensation for any patent infringement.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law.  Cutler law firm’s attorney Jared R. Clark focuses his practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.