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Infringement Studies

Typically, a provisional patent application is filed by the inventor(s) if the product or concept is still in the development stage or if the inventor(s) wants early protection for the invention while the full specification of the invention is still not yet fully ready.

IP Procure conducts infringement studies to determine if the features of a product or invention read on every element of the claims of active or unexpired patents and to determine if a client is potentially free to operate without risk of infringing the identified patents in a particular country. IP Procure conducts the infringement searches on internationally accepted databases and publicly available patent databases to identify patents that are potentially applicable to the field and technology of a client’s product. Further to conducting an infringement search, IP Procure performs an infringement analysis of the patents identified by the infringement search, which includes a thorough and careful review of the claims of unexpired patents. IP Procure performs individual comparisons between the independent claims of the patents identified by the infringement search and the elements or structures described in the client’s product.

Patent Infringement Laws
United States

In the United States, patent infringement may occur where the defendant has made, used, sold, offered to sell, or imported an infringing invention or its equivalent. For a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device.” Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).

There are two main kinds of infringement – direct and indirect. A person is said to directly infringe a patent by making, using, offering to sell, selling, or importing into the US any patented invention, without authority, during the term of the patent 35 U.S.C.  271 Infringement. Unlike direct infringement, which does not require knowledge of the patent or any intent to infringe, indirect infringement can only arise when the accused indirect infringer has at least some knowledge and intent regarding the patent and the infringement. 35 U.S.C.  271(b) creates a type of indirect infringement described as “active inducement of infringement,” while 35 U.S.C.  271(c) creates liability for those who have contributed to the infringement of a patent. Both types of indirect infringement can only occur when there has actually been a direct infringement of the patent. Courts can find that there has been direct infringement, however, merely from circumstantial evidence that there must have been at least one instance where the inducement or contribution resulted in the practice of the patented art. 5 U.S.C.  271(b) covers situations where one actively induces the infringement of a patent by encouraging, aiding, or otherwise causing another person or entity to infringe a patent. A potential inducer must actually be aware of the patent and intend for their actions to result in a third party infringing that patent. 35 U.S.C.  271(c), or “contributory infringement,” is triggered when a seller provides a part or component that, while not itself infringing of any patent, has a particular use as part of some other machine or composition that is covered by a patent.

Even if the accused device does not literally infringe a patent claim, it may still infringe under the doctrine of equivalents. In the U.S, the doctrine of equivalents analysis is applied to individual claim limitations, not to the invention as a whole. The doctrine of equivalents is a concept created by the judiciary, serving the equitable purpose of preventing an infringer from stealing the benefit of an invention (Texas Instruments Inc v US International Trade Commission, 805 F 2d 1558, 1572 (Fed Cir 1986)). The Supreme Court explained the doctrine as follows: To permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for  indeed encourage  the unscrupulous copyist to make unimportant and insubstantial changes. (Graver Tank & Mfg Co v Linde Air Prods Co, 339 US 605, 607 (1950).) One limitation imposed on the doctrine of equivalents is the all elements rule. For infringement to exist under the doctrine of equivalents, the accused device must contain at least an equivalent for each limitation. Equivalency thus can exist when two components of the accused device perform a single function of the patented invention Equivalency can also exist when separate claim limitations are combined into a single component of the accused device; Corning Glass Works v Sumitomo Elec USA Inc, 868 F 2d 1251, 1255 to 1256, 1258 to 1259 (Fed Cir 1989). The Federal Circuit has held that if a patent specification discloses a particular equivalent, but the claim language as construed does not literally encompass that equivalent, the unclaimed equivalent is considered dedicated to the public and cannot serve as a basis for infringement (Johnson & Johnson Assocs v RE Serv Co, 285 F 3d 1046 (Fed Cir 2002)).


Patentees have exclusive rights to the making, offering for sale, or using the subject matter of a patent. In the case of a process, there is an exclusive right to use the process and offer it for use. Article 64(2) EPC states that if the subject matter of a European patent is a process, the protection conferred by the patent shall extend to products directly obtained by such process. Article 64(3) EPC states that any infringement of a European patent shall be dealt with by national law.

Protocol on the Interpretation of Article 69 EPC explains guidance that claims are to be construed using a “fair” middle position, neither “strict, literal” …even the protocol is subject to national interpretation (Southco Inc v Dzus, [1992] R.P.C. 299 CA and Improver Corp. v Remington Products Inc [1990] FSR 181). Article 69(1) EPC further explains that the extent of the protection conferred by a European patent is determined primarily by reference to the claims of the European patent (rather than by the disclosure of the specification and drawings, as in some older patent systems), though the description and drawings are to be used as interpretive aids in determining the meaning of the claims.

In Germany and UK, the law, like the other laws of the EPC member states, distinguishes direct from indirect infringement. Direct infringement is generally defined with reference to the two basic patent categories: product (device) claims and method (process) claims. Direct infringement requires (1) for a device patent, that the infringer offers or puts on the market, or uses a device realizing the entirety of the features of an independent claim, or (2) for a method patent, that the infringer offers or practices a method realizing all steps of an independent claim. Indirect infringement occurs when a third party supplies an unpatented part of a combination product. The protection of combination patented product relates closely to indirect infringement. Current German law does not require direct infringement to be committed in order to bring in an indirect claim. In Germany and in UK, contributory infringement is an independent type of infringing usage and not solely an act of participation in direct infringement by a third party.

The doctrine of equivalents is a common law doctrine providing generally that a patent may be infringed even if the literal claims of the patent are not infringed. In Europe, the Doctrine of Equivalents was first developed by the German courts. This concept is now been followed by all the European countries. In Europe, a device is considered to be equivalent if there is identity between the device and the claimed invention with respect to the problem and the effect, but not necessarily the “solution principle” (the manner in which the device operates).


Patent infringement in India refers to the investigation and comparison of all relevant patents that may claim an invention similar to the product and the product or the process is analyzed to see if the product or the process reads on one or more patents or is substantially described by the claims of the one or more patents. The guidelines relating to patent infringement under the Indian Patent Act 1970 are provided under Section 104 to Section 114 of the Act.

The most significant amendment introduced in the Act by the 2002 Amendment with regard to the enforcement of patents was the introduction of Section 104-A. Section 104-A states that in any suit for infringement of a patent, where the subject-matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process is different from the patented process if the subject-matter of the patent is a process for obtaining a new product; or there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used provided that the patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process.

The Indian Patent Act explains that certain acts are not to be considered as an infringement. Section 107A explains that (a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product; (b) by importation of patented products by any person from a person, who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights.

The doctrine of equivalents is a legal rule in most of the world’s patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. In India there is no exact definition for the doctrine of equivalent. The courts refer US and UK precedents for judgments on the doctrine of equivalents.

Courts in India would be inclined to purposively construe the claims in order to determine whether or not the acts complained of infringement. A patent owner has to establish substantial equivalence of the impugned invention to that of the patented invention. This can often be established by way of experimental data.

The court has explained in Ravi Kamal Bali v. Kala Tech and Ors AIR 2008 emphasizing Section 54 of the Indian Patent Act that the patent holder of the main invention is entitled to improve or modify the main invention and claim a patent for such or else it would permit anybody to benefit from it by exploiting the main invention. The court opined that a mere carrying forward of an existing product involving change of form, proportion or degree or the substitution of an equivalent is not an invention.


Patent infringement in Japan is defined as an infringement of the entire operation of a patented invention (constituent features) without the patent owner’s authorization (i.e., direct infringement). Partial operation or operation in a different manner is not deemed to constitute patent infringement. Infringement under the patent law in Japan is defined by Article 101 of Patent Act (Act No. 121 of 1959), which shows the following acts shall be deemed to constitute infringement of a patent right:

(i) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business;

(ii) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the producing of the said product and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and the said product is used for the working of the invention;

(iii) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the use of the said process as a business; and

(iv) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the use of the said process and indispensable for the resolution of the problem by the said invention, knowing that the said invention is a patented invention and the said product is used for the working of the invention as a business.

In Japan the doctrine of equivalents gives the patentee a broader interpretation of the claims based on the understanding that if no exceptions are provided beyond the literal interpretation of the patented claims, it is often very difficult to provide adequate patent protection. The Supreme Court of Japan explained the requirements for applying the doctrine of equivalents. and the judgment stated “even if, within the construction as indicated in the claim in the patent specification, there is a part which is different from the products, if (a) this part is not the essential part of the patented invention, (b) the purpose of the patented invention can be achieved by replacing this part with a part in the products and an identical function and effect can be obtained, (c) a person who has an average knowledge in the area of technology where this invention belongs could easily come up with the idea of such replacement at the time of the production of the products, (d) the products are not identical to the technology in the public domain at the time of the patent application of the patented invention or could have been easily conceived at that time by a person who has an average knowledge in the area of technology where this invention belongs, and (e) there were no special circumstances such as the fact that the products had been intentionally excluded from the scope of the patent claim in the patent application process, the products should be regarded as identical with the construction as indicated in the scope of the patent claim and fall within the scope of the technical scope of the patented invention”; (THK v. Tsubakimoto; Supreme Court of Japan Case No. 1994 (o) 1083 decided February 24, 1998 ).