Particularly because of exposure for treble damages and attorneys’ fees, patent infringement is a serious matter. Moreover, corporate officers who actually aid and abet their corporation’s infringement have been held liable for inducing infringement – regardless of whether the corporation is the alter ego of the officer. To avoid a finding of willful infringement, a potential infringer with actual notice of another’s patent rights has an affirmative duty to exercise due care in determining whether or not it is infringing that patent. To discharge this duty it is strongly advisable to obtain and follow an opinion of counsel.
When a business wants to copy a product that is covered by a patent, patent counsel can often provide valuable advice on how to “design around” the patent’s claims. A study of the patent and its prosecution history can usually shed light on ways to avoid infringement of patent.
As noted above, there is no infringement liability for making, using, or selling an invention until the application is published. However, copying an invention on which a patent application is pending is risky because the patent could issue at any time. There are some steps that a business can take to minimize the risks of copying a product marked “patent pending.” First, a patentability search of the prior art can be conducted to determine whether the product is patentable, and if so, what protection is likely to be obtained. Second, a search can be made for foreign patent applications corresponding to the U.S. application, because foreign applications typically are not maintained secret. Of course once a patent issues it can be studied, and counsel can advise with greater certainty how to avoid infringement.