Patent Infringement Issues By a Patent Agent

TASA ID: 1854

What is a patent agent?  In the United States, we have both patent agents and patent attorneys, registered with the United States Patent and Trademark Office (USPTO), required to have a technical degree, and pass the same rigorous test.  The obvious difference is that the patent attorney has the additional law degree and has passed the bar in at least one state. The technical degrees accepted by the USPTO are limited and focus on engineering disciplines.  A degree in mathematics for example, is not accepted and only some computer science degrees are. To my knowledge, the United States is the only country that uses the duel patent attorney/patent agent system.  Other countries such as Canada and the United Kingdom have patent agents who may or may not be attorneys.  In these countries, the agent must have a technical degree and pass a rigorous exam like in the U.S.

A patent agent is limited to dealing with the USPTO in the preparation and prosecution of the patent application and; therefore, does not partake in any other legal-related work. They cannot issue patent validity or patent infringement opinions unless working as an expert witness in an existing infringement case.

A patent agent can certainly act as an expert witness in a patent infringement case.  Having that patent-related background is certainly helpful in infringement cases, but as in any other case involving expert witnesses, the agent must be an expert on the subject technology embodied in the patent or patents involved in the particular patent infringement case.  The key patent-related phrase tied to an expert witness is that s/he must "be someone skilled in the art."  It is important that the expert have experience in the specified technology at the time of filing the patent.

Patent infringement cases are growing both in number and in importance with very large financial implications.  In the recent case involving Samsung and Apple regarding smart phones, the initial award exceeded a billion dollars.  There are unique aspects to patent infringement cases.  The key element is the claims map which takes every part or element of the patent claim and compares it to the product accused of infringement.  This is a very detailed and carefully analyzed part of the case and requires significant involvement by the expert.   Before a claims map is prepared, there is a Markman court hearing where the judge determines exactly what the language of the claims mean.  The most favorable case for an expert is where s/he is retained prior to that Markman hearing, so that the expert can assist the attorneys in defining the claim terms to best benefit their side.

In any event, the expert will be working on defining the claims map and determining what type of infringement is involved.  The easiest and most straightforward infringement is labeled as literal infringement.  This is the case where the claims map indicates that the infringing product contains all of the elements of the claim.  It could contain additional elements and still be infringing. The other situation is called infringement by the doctrine of equivalents where the infringing product is alleged to complete substantially the same task, in the same way, achieving the same result. This is obviously more difficult to prove and can really challenge the expert.

An expert in a patent infringement case will just as likely be on the defense.  Here, the defense will try to get the patent at issue declared invalid by finding prior art/documentation which would be printed material that predates the invention and shows the same idea as the invention.  This prior art/documentation could consist of two or more printed articles that together could be combined to create the invention described in the patent. The prior art/documentation can be used to either show that the subject patent was obvious to "anyone skilled in the art" or it was not novel since someone else had previously described the invention. The expert should review the file wrapper which is the complete record of the initial patent application and all subsequent communications between the patent office and the holder of the patent.  During this time the inventor may have made changes to the claims that could serve to limit those claims and create a situation where the claim does not apply to the accused product. The plaintiff expert will need to focus on the claims map and on a detailed analysis of the accused product.  That expert must also be prepared to defend attacks on the validity of the patent.  The defendant expert will be prepared to attack the validity of the patent and to defend the accused product.

Any expert involved in patent infringement must be prepared to defend themselves as experts in the field at the time of the patent application. The opposing side will examine prior work done by the expert and any written materials such as articles or books prepared by the expert. While patent infringement cases have unique aspects, there is no reason an expert witness cannot be involved in such cases.   

This article discusses issues of general interest and does not give any specific legal or business advice pertaining to any specific circumstances.  Before acting upon any of its information, you should obtain appropriate advice from a lawyer or other qualified professional.

This article may not be duplicated, altered, distributed, saved, incorporated into another document or website, or otherwise modified without the permission of TASA.

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