written by The Law Offices of James David Busch LLC. 

James is Licensed to Practice before the USPTO, in Illinois and Arizona.

Some of the Many Ways You Can Lose Your Patents or Won't Be Able to Assert Your Rights

Some of the Many Ways You Can Lose Your Patents or Won't Be Able to Assert Your Rights

In my last post, How to Create a Valuable Patent Portfolio, I noted that a valuable patent portfolio is one that is free of issues that need to be resolved.

Knowing the many ways that rights can be taken away or rendered inapplicable during an infringement action can help patent owners plan for and avoid these issues.  For each of these hazards, there are ways to minimize the associated risks.

Below is a big, but not necessarily comprehensive, list of ways patent rights can be lost or rendered inapplicable in a given assertion: 

  1. 35 USC 101 - Non-statutory subject matter.  The invention is 'abstract,' math, a law of nature, natural phenomena, or a product of nature.

  2. 35 USC 102 - Not novel. Someone else disclosed the invention first.

  3. 35 USC 103 - Too obvious. Another invention can be modified in an obvious way to obtain the asserted invention.

  4. 35 USC 112 first paragraph / 112(a) - The specification fails to provide a written description that enables any person of skill in the art to make and use what is claimed.

  5. 35 USC 112 first paragraph - The 'best mode' of the invention was not disclosed at the time of filing.

  6. 35 USC 112 second paragraph / 112(b) - The claims are indefinite--they do not make sense.

  7. 35 USC 112 sixth paragraph / 112(f) - The claim is means plus function or step plus function and the specification does not disclose means or steps that correspond / the alleged infringement is different than what is disclosed in the specification so the claims do not cover the accused product.

  8. 37 CFR 1.56 - You failed to disclose relevant information from the USPTO during prosecution, therefore your entire patent portfolio is invalid.

  9. Incorrect Inventors - "The incorrect inventors are listed on the patent, therefore your patents are invalid."  But see 35 USC 256.

  10. Maintenance Fee Lapse - The patent owner failed to pay the maintenance fees at one of 3.5, 7.5, or 11.5 years after issuance.

  11. 35 USC 271(a) - No Direct Infringement - The defendant does not make, use or sell any patented invention because at least one element of the asserted claims is not applicable under literal 'all elements' or doctrine of equivalents infringement.

  12. 35 USC 271(b) - No Inducement to Infringe - Patent owner did not show that the accused party knowingly intended to encourage or aid another to directly infringe a patent by, for example, providing instructions on how to practice a patented invention.  See, e.g., Hewlett-Packard Company v. Bausch & Lomb, Inc., 909 F.2d 1464 (Fed. Cir. 1990)

  13. 35 USC 271(c) - No Contributory Infringement - The patent owner did not show that the defendant assisted or encouraged someone else to infringe by selling or offering to sell a material component of a patented invention knowing that it was especially made or adapted for use in an infringement of a patent and is not a staple article or commodity of commerce suitable for substantial non-infringing use.

  14. Divided Infringement - The defendant has another party perform some of the acts required for infringement, but it does not direct or control the other party or constitute a joint enterprise; thus, no infringement.  In Akamai Techs, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015), an en banc Federal Circuit held that a single entity is responsible for another’s performance of claimed steps if (1) the entity “directs or controls” the other’s performance or (2) the entity and the other constitute “a joint enterprise.”

  15. Extraterritorial Method Claims Step - One step is performed outside of the US, so the method claim is not infringed.  See, e.g., NTP v. RIM: The Diverging Law Between System and Method Claim Infringement.

  16. 35 USC 286 - The infringement ended more than 6 years ago.

  17. 35 USC 273 - Prior user rights apply.  Therefore, even if there is infringement, the infringer is not liable.

  18. Shop Rights Doctrine - An independent contractor was hired to create a product, got a patent for the product, then sued their client for infringement.  The client/infringer has shop rights to the invention.

  19. Patent Previously Assigned in Employment Agreement - The Inventor was employed by an infringer and was required to assign the patent rights, but for some reason did not and obtained the patent without the employer's knowledge.  The Patent should be assigned to the infringer.

  20. 35 USC 252 - Effect of Reissue - Intervening rights apply and the infringer may continue to practice the invention without liability for infringement…

  21. Patent Exhaustion - An authorized sale of the patented item has occurred, so the exclusive right to control the use and sale of the article is exhausted.

  22. Prosecution History Laches - “While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of unreasonable and unexplained delay in prosecution. For example, where there are ‘multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,’ laches may be triggered.” See MPEP 2190.

  23. Other Defenses that a Court May Create. - Like Prosecution History Laches, Alice's "Abstract Idea" / "Inventive Step" test, etc.

As an inventor, it is disheartening to see a list of the many ways a patent can be lost.  In a contingent fee licensing or enforcement program, there is only one way to win—to convince an accused infringer to pay a meaningful royalty.

This favorable result can happen by obtaining a license agreement or by obtaining a judgment of validity and infringement that is actually paid by the defendant. 

With either path, it will serve a patent owner well to proactively prosecute its patents to minimize the above risks.

In the next post, I will discuss the factors that are examined when evaluating a patent case for contingent fee representation.

What Makes a Good Contingent Fee Patent Case?

What Makes a Good Contingent Fee Patent Case?

How to Create a Valuable Patent Portfolio

How to Create a Valuable Patent Portfolio