[Jewelry making - Article 00882] - Re: [Orchid] Patent Process

[James White]

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>          but in checking on other patents, to find out if you're
>     infringing, only the claims have the legal definition of what that
>     invention is.  You don't have to spend time reading the whole
>     patent to know if you infringe or not. 

    The courts will be quite shocked at your cheek! In fact the judge(s)
    in any infringement case are the ONLY deciders of what the claims
    mean and they do it at what are called "Markman hearings" (after the
    famous Markman cases) using the multi-step process I outlined before.
    One of the reasons that infringement searches and opinions are only
    allowed to attorneys and often cost $10,000 and up is precisely the
    requirement for this multi-step process. While many claims can, in
    fact, fairly easily be read and understood clearly enough by
    laypersons that reading and understanding is never definitive---and
    doesn't get you off the hook if the court decision is you infringed
    even though you didn't think you were the way you read the claim
    (with or without benefit of specification study, etc.). 

>      You don't even have to spend time reading the dependant claims if
>     the independant claim that they are based on doesn't infringe. 

    Quite true in theory except that you have "infringement" exactly
    backwards. Things, processes, etc. infringe claims, never do claims
    infringe things... or even other claims. A patent, for example, never
    "infringes" another patent but a product made under a later patent
    very well can infringe an earlier patent's still enforceable claim. 

>         For designing around patents, even the big corporations leave
>     themselves open.  If a part says that it gets riveted, a
>     mechanical engineer knows other methods such as electron beam
>     welding, friction welding, or whatever. 

    True but rarely will a claim say "riveted." It will say "attached"
    or "fastened" and the body of the specification will give a few
    examples plus "or other fastening means" generic language. When a
    claim is, in fact, specific to a fastener the claim is usually
    threading into such narrowness that it's useless for all practical
    purposes (but patent practitioners will be happy to get paid to get
    the patent). But it can also be true that when some specific is
    mentioned that there is also a range of alternatives that are also
    includable by the court under the "doctrine of equivalents" even
    though they are not anywhere to be found in the patent specification
    and, indeed, may have been completely unknown to the inventor and/or
    patent drafter. One of the classic cases claimed "a bar" and an
    infringer used a "C" shaped flat piece in its place---the infringer
    was rightly skewered (so to speak). 

    I do, of course, agree that one must adopt some reasonable heuristic
    in studying whether one's efforts are likely to infringe someone
    else's patent(s) but promulgating your own heuristic without at least
    noting it's problems and potential downside may expose the unwary to
    more risks than they thought they were accepting. You may be happy to
    note that the CAFC just (Sept. 13, 2004) reversed its own precedent
    that used to MANDATE that a judge or jury consider an infringer's
    failure to get a legal opinion before proceeding with a product
    introduction to be EVIDENCE of WILLFULNESS in infringing an existing
    patent. That will at least reduce, but of course not eliminate, the
    risk of a treble damages award being inflicted on someone taking your
    advice. 

James E. White
Inventor, Marketer, and Author of "Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)"  Info Sites:   www.willitsell.com    www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

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