Infringement Search is performed in order to determine if a particular product is practicing all the limitations of the patented claims. In simple terms, patent infringement refers to a case when a particular party uses, sells, or makes a product using a patented technology without obtaining permission or taking a license from the patent-holding party.

Infringement Search is an essential tool for patent owners, especially those considering or preparing for patent enforcement or litigation, licensing negotiations, or even the sale of their patents, also before commercializing a product or process, and can help identify potential infringement issues that need to be addressed. It involves a detailed comparison between the features of your product, process and the claimed product or process, to see if there’s an overlap.   

The importance of an infringement search lies in its role in preventing legal conflicts and protecting IPR rights. Infringement searches are performed to ensure that nobody makes, uses, or sells any product that uses your patented invention without your consent. An infringement search provides information about potential infringing products available in the market. If a potential infringement is detected, the patent holder can sue the infringing party, allowing timely intervention.    

Consequences of not conducting an Infringement Search:

• The patent holding entity might be unaware of the potential infringement products in the market, and may be missing out on damages if another unauthorized party is using their invention.
• The patent holder might be missing out on potential licensees that might be knowingly or unknowingly using their patented invention.
• Your competitors might be profiting from your patented invention without your permission.
• Unauthorized use of your invention by others can dilute its exclusivity, making your invention less valuable.
• In an infringement case filed against the infringing entity, a court can issue an order compelling to immediate stop making or selling an infringing product, impacting the infringing entity’s business, and the entity might have to pay significant monetary compensation to the patent holder.
• Not conducting an infringement search can also damage reputation and credibility. Legal conflicts can negatively affect public trust, investor confidence, and business relationships.
• Overall, neglecting an infringement search increases uncertainty, undermines fair competition and innovation.   

Legal Foundations of Infringement Search

The legal foundations of infringement search are rooted in statutory law, judicial precedents, and established legal principles that aim to balance the protection of intellectual property with fair competition and innovation. 

Patents: The fundamental legal principle underlying an infringement search is a patent itself. Essentially, a patent is a right to exclude others from making, using, or selling a claimed invention within the territory where the patent is granted, for a specified period of time, typically 20 years.

Difference between Infringement Search and other searches: Other patent searches generally assess the novelty and patentability of an invention; however, an infringement search, on the other hand, focuses on identifying potential violations of granted patent rights.

Infringement types:

Depending on the situation, there can be different types of infringement cases:

Direct Infringement: This is the most common and straightforward type of infringement. It occurs when a party, without consent from the patent holder, performs the exclusive rights granted by the patent.

Literal Infringement: It occurs when every element of a patent claim is literally found in the accused product, exactly as described in the claim language.

Infringement under the Doctrine of Equivalents: It is a case when a product doesn't literally contain every element of a patent claim, it can still infringe under the ‘Doctrine of Equivalents’. This legal doctrine prevents infringers from making insubstantial changes to a patented invention to avoid literal infringement, while still capturing the essence of the invention.

Indirect Infringement: Indirect infringement occurs when a party doesn't directly perform or embody all steps of a patented process but rather facilitates another party to do so.

Multiparty Infringement: This is the case where two or more parties are involved in the infringement. The infringing acts are carried out by the parties acting together.

How Patent Claims define Infringement:

The scope of a patent's legal protection is defined by its claims. When an Infringement search is conducted, the claims, more specifically the independent claims, are analyzed to see if all the elements of a claim are present in the target product. If all the claim elements are present, then it is a case of a potential infringement.

Importance of Infringement Search:

• Protects unauthorised use: Infringement search is important as it ensures that nobody makes, uses, or sells your patented invention without your consent.
• Identify potential Infringers: Conducting an Infringement search can help you find potential infringing products available in the market.
• Seek Damages: If any company is found to be using your patented invention, then you can file a case against that company and seek damages.
• Finding potential licensees: An Infringement search can help you find potential licensees that might be knowingly or unknowingly using your patented invention.
• Patent portfolio strength: An Infringement search can help you check the strength of your patent portfolio with respect to the current technology market.
• Patent maintenance: Infringement search can help you identify your strong and weak patents in your portfolio for informed decision-making related to patent maintenance.
• Attract investors: Infringement search can help you attract investors and partners by showing them your portfolio strength.
• Patent commercialization: An Infringement search can help in patent commercialization and getting monetary gains out of your portfolio.
• Strategic IP management: Infringement search can help in determining potential strategies to get returns from the investment made in filing and maintaining the patent portfolios.

How to Conduct an Infringement Search?

The following steps are performed in conducting an infringement search:

• Patent Understanding: The very first step is building a thorough understanding of the subject patent and reviewing the patent's claims, specification, etc. Then, identifying the broadest independent claim, the key elements and the novel part of the claim.
• Identifying potential infringers: The next step is identifying potential infringers and analysing their products or technologies that may infringe on the patent. It can be a given target or can be an open search, depending on the client's requirements.
• Examining accused products: An important step is examining the accused product(s) in detail to identify their features, components, etc. This involves a thorough search, including going through the product's detailed documentation, product architectures and teardowns, etc.
• Comparing Claim: After examining, the next step is comparing the claim elements to the features of the accused product and determining whether each element in the claim is present in the accused product or not.
• Ranking: The next step is providing an infringement level ranking to each patent in accordance with the accused product. The infringement levels are High, Medium or Low. High means complete infringement mapping, Medium means partial infringement mapping, including novel claim elements, and Low means no infringement mapping.
• Documentation and reporting: The last step is documentation and reporting, preparing a detailed report including analysis comments, target products, source links, infringement level, etc., for a clear understanding of each patent and its infringement search.
• Discussion with client: Further, the potential infringement cases can also be discussed with the client to help him make further decisions.

Sample Report snapshot:

 

Tools & Resources for Infringement Search:

• Online documentation: During an Infringement search, we analyse the target products documentation available online through Google searches, company’s websites and forums.
• Demonstrating Videos: If required, we also identify and analyse available videos related to the product's working and its internal components.
• Tools for Standards: For standards-based products, we use special tools to gain insights into the standard-related documentation.
• Teardowns/Architectures: Further, if required, we also look into the product’s architecture and teardown documentation.
• Versatile Team: We have a versatile team of various technology experts having expertise in different technical domains.
• Expertise in various domains: We have experienced professionals who know various products and technologies. We have experts for source code reviews, reverse engineering and product teardowns, etc.

Handling Identified Potential Cases:

After identifying the potential infringement cases as a result of the infringement search, the following steps are followed to handle these cases:

• Making feasibility reports to see the overlap of the patent claims with the accused product.
• Making sure the accused product is currently operating in the market and meeting the data criteria.
• Making Evidence of Use (EoU) charts and color coding for detailed mapping of the claim elements with respect to the product features/functionality.
• Discussion with the client and other authorities involved in the project for further escalation.
• One of the important steps that can be taken is ensuring that the infringed patent is valid and enforceable, by conducting a validity search.
• After all these steps, the patent holder can go to the infringing party to seek damages.
• The patent holder can go for licensing agreements with the infringing party according to their requirement.
• The patent holder can also file a case in court against the infringing party, asking for damages and fees.
• Our experts can provide consultation at every step involved in the process.

Legal Opinions:

A formal legal opinion in infringement is basically an assessment by a lawyer or law firm regarding whether a product infringes a patent. It involves analyzing the patent claims and comparing them to the accused product.

The importance of legal opinions cannot be overlooked. For patent holders, legal opinion can help in determining the strength of their patents. If the patent holder is going for an infringement lawsuit, then legal opinion plays a very important role in further proceedings.

In an infringement case, a legal opinion is prepared through a comprehensive and detailed analysis of the patent claims with respect to the accused product. Every claim element is compared to the corresponding features of the accused product, considering all the evidence available. It can also provide details related to the type of infringement, like direct infringement, contributory infringement, or inducement infringement. A Legal Opinion document can also include comments related to the subject patent's validity and enforceability.

All these points in the legal opinion provide a basis for legal action, settlement negotiations, or decision-making for the parties involved. Legal opinions can play an important role in patent litigation cases. Sometimes in an infringement case, the legal opinions can be considered, and a well-formulated legal opinion can influence the outcome of the case.

Industry/Technology Specific Considerations:

Source code reviewing: Source code analysis is a foundational component for software. It reveals potential patent infringements that may be hidden within lines of code.

Certain tools can be used to help source code experts to analyze the code, namely WinGrep/PowerGREP, Microsoft Visual Studio, Notepad++ etc.

Source code review is a useful tool when it comes to software product-related infringement. There are certain things to be taken into account like if the infringing product uses open-source code with permissive licensing terms, the infringement allegation can be dismissed. Hence, source code reviewing can be used to ascertain patent infringement in some cases.

Standards related: There are certain cases where the patents are related to specific standards like telecom patents, Wi-Fi patents, video compression-related patents, etc. In such cases, the target products might not mention the details of the procedure they are following, but a particular standard they are compliant with. In such a scenario, the standard-related documentation can be analysed like ITU-T, 3GPP documents, IEEE documents, etc.

Further, we also have some in-house tools that we use when performing standards-related infringement searches.

Semiconductor/Fabrication related: For semiconductor or fabrication level patents, there is a different approach that is followed while conducting an infringement search. In such cases, the target products might have very limited evidence to show infringement, as fabrication-level details are merely disclosed by the companies. For these types of cases, the standard or commonly used fabrication details can be used from third-party sources for trivial elements. For main/novel elements, apart from the available product documentation, we also consider the research papers or educational documentation of the target product/company in order to map the evidence or show the intent of use of the patented technology by the product.

Products requiring reverse engineering/teardowns: There are some cases in which the reverse engineering or teardown of the target product is required to ascertain the infringement. For such cases, we have our team that is specialized in reverse engineering of certain products/technologies.

In some cases, we have closely worked with the client for reverse engineering or teardown-related cases and successfully cracked the potential infringement by the target product.

Real-World Case Studies:

Case 1:

A big client once approached us to help monetize their IP portfolio against their key competitors. The requirement of the project was to identify potential infringing products from the competitors. There was certain target companies provided by the client that we had to focus on. Mostly companies were working in the similar domain as that of the client.

During our infringement analysis, we analyzed each target company and their products thoroughly and we gave them a ranking. We rank the patents as high, medium or low depending on their infringement potential. High means a complete overlap infringement case, Medium having some of the elements present in the accused product including the novel element. Low means no overlap with the target product or a counter proof is available that the product is doing it in a different way as that of the claimed.

During our search, we were able to identify a good number of potential infringing products from the vast and varying product portfolio of the given competitors. The client appreciated us for the results. Further, we also prepared the detailed claim charts for all the potential infringement cases, which the client used in the further legal proceedings against its infringing competitors.

Case 2:

One of our clients once requested us to perform infringement search on its patent portfolio, the objective of the client was to seek licensing opportunities and find out the potential licensees in the market. It was an open search. First, we identified some big market players related to the patent portfolio domain and performed product search in these players. Apart from open search, we focused on these big players and their products. As big players tend to cover most of the market, profit-making chances are also high when targeting big players.

During our infringement search, we were able to identify some good infringing products against the products of these players. We finally shared our output in the form of infringement feasibility reports and Excel sheets. The feasibility report includes the infringement probability of a product along with a detailed summary of the analysis. The excel sheet contains our detailed analysis comments, source links, infringement level, target product and company details, etc. The client was quite impressed by our approach and our results, and used our outputs for identifying potential licensees.

Common Misconceptions:

‘Infringement only occurs with intentional copying’: It’s a common misconception that intentional copying leads to infringement cases. However, the fact is that patent infringement can occur even without intent to copy or awareness of the patent.

 ‘Modifying a product before selling it excuses infringement’:  Another common myth around infringement is that modifying your product before selling, will filter it out from infringement. However, modifying a product can still infringe if the core patented invention is used.

 ‘Only large companies are targeted for infringement’: Many entities believe that only giant players are targeted for infringement. However, any entity or business, irrespective of its size, market occupancy, can be targeted for infringement.

 ‘If you bought a product from someone else, you are not responsible for infringement’: Another misconception around infringement is that only the seller will be sued in case of an infringement. In fact, patent owners can pursue legal action against those who manufacture, sell, or use infringing products, regardless of their position in the supply chain.

 ‘If you tweak the product a little, you are safe’: A common myth is that tweaking the product a little bit will safeguard it from infringement. However, even small changes to a patented invention can still land you in an infringement case. Patent law deeply looks at whether your product performs substantially the same function in substantially the same way to achieve the same result.

 ‘Patents are only for big companies’: Another common belief is that intellectual property rights, patent portfolios, are only for big market players. However, some of the most important patents sometimes come from small inventors and start-ups or even very small businesses. Hence, patent rights enforcement isn’t just for giant players; it’s for each and everyone in the business.

Conclusion:

Infringement searches are essential for protecting patents, identifying potential infringers, and maximizing portfolio value. By analyzing claims, leveraging industry-specific tools, and seeking legal guidance, patent owners can enforce rights, pursue damages or licensing, and support commercialization. Neglecting this process risks financial, legal, and reputational losses, making infringement searches vital for safeguarding innovation and ensuring fair competition.

How can Effectual help – our expertise domain-wise in dealing with Infringement Cases:

• At Effectual, we have a huge team of experienced workforce. The team consists of Engineers, Bachelors, Masters and PhDs from various technical backgrounds, including Computer Science and Information Technology, Electronics and Communications, Electrical, etc.
• Our techno-legal professionals are quite experienced when it comes to correlating the marketing language of the products with technical terminologies, to relate the product feature/functionality with the patent claim elements.
• We provide portfolio management and targeted infringement searches for maximum monetization.
• We have our in-house patent ranking tool to determine the patent’s strength in the portfolio. Our ranking tool determines the value of a patent based on various important parameters, like citations, litigation status, geographical coverage, etc. The algorithm of our in-house tool assigns different weights to these parameters depending on the business requirements and hence assesses the patent strength accordingly.
• Many of our team members have Law degrees along with technical degrees, which makes our team members an ideal fit for Intellectual property-related services.
• We have experienced team members in different domains, be it the software domain, semiconductor fabrication domain, standards-related domain, telecom or Wi-Fi domain, machine learning domain, etc.

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