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(Message started by: warrendekker on Oct 2nd, 2007, 12:19pm)

Title: Can verifying patent claims contitute infringement
Post by warrendekker on Oct 2nd, 2007, 12:19pm
Using a hypothetical situation.

Man A reads a patent.  He is well-versed in the subject, and cannot believe the claims.  The patent claims that if you mix compound A and compound B, you get product C.  He wishes to verify the claims of the patent, because he is highly suspicious that the process described, won't work.

Does Man A infringe the patent, if he mixes compound A and compound B in order to verify if product C is produced...if he duplicates the process described in the patent?  Can an attempt to verify the claims of a patent constitute infringement?

Thanks to all who would care to reply.  


Title: Re: Can verifying patent claims contitute infringe
Post by MattB on Oct 2nd, 2007, 2:23pm
Yes, but to what remedy?

Title: Re: Can verifying patent claims contitute infringe
Post by warrendekker on Oct 2nd, 2007, 7:14pm

Man A is a scientist who reads the patent literature as well as the scientific literature in his discipline.  The claims of the patent go so much against the conventional wisdom of the discipline, that he wants to verify, experimentally, the claims of the patent.  Would this constitute infringement?

Thanks.


Title: Re: Can verifying patent claims contitute infringe
Post by patent_type on Oct 2nd, 2007, 8:08pm
Motive is neither material nor relevant.

Title: Re: Can verifying patent claims contitute infringe
Post by Wiscagent on Oct 2nd, 2007, 8:42pm
If you make a patented item without permission of the patentee, then (generally) you are infringing.  There are some exceptions:
- patent laws don't apply to the states;
- the patent has been ruled invalid or unenforcable;
- the (narrow) research exception applies;
- you've been selling the product since a year before the patent was applied for
- and probably several other exceptions.

But even if you are infringing the patent, the next question should be "What damages were done to the patentee?"  If the answer is that little or no damage was done to the patentee, then the patentee would have no motivation to sue.

Anyway, that's my non-lawyerly opinion.

Title: Re: Can verifying patent claims contitute infringe
Post by Isaac on Oct 3rd, 2007, 7:06am

on 10/02/07 at 20:42:49, Wiscagent wrote:
- patent laws don't apply to the states;


More precisely, the patent laws apply to the states, but you cannot sue a state for patent infringement in federal court unless the state waives its immunity.  You cannot sue for patent infringement in state court.   Often there is simply no forum to sue a state.


Quote:
- the (narrow) research exception applies;


The research exception is extremely narrow.   See the 2002 CAFC case in which Duke University attempted unsuccessfully to invoke the research exception.  The activity A person with an economic interest in the result most likely fall outside of the research exception.
 

Quote:
- you've been selling the product since a year before the patent was applied for


I think the exception you are describing is only for patents drawn to methods of doing business.

Title: Re: Can verifying patent claims contitute infringe
Post by Wiscagent on Oct 3rd, 2007, 10:09am
Isaac -

Please pardon the lack of precision in my earlier post.  The main point I was trying to convey is that simply because someone practices someone else's patent doesn't mean that the "infringer"  is likely to be sued; and there are both legal reasons and practical business reasons why not.

By the way ... if a process patent isn't a "business method" patent, why would the applicant have applied for the patent in the first place?

Title: Re: Can verifying patent claims contitute infringe
Post by Isaac on Oct 3rd, 2007, 12:12pm

on 10/03/07 at 10:09:10, Wiscagent wrote:
By the way ... if a process patent isn't a "business method" patent, why would the applicant have applied for the patent in the first place?


Good question.  I wonder if there have been any court cases that cast light on what a 'method of doing business' really is.   About all I'd be willing to say about it is that whatever method was claimed in State Street is probably subject to the exception.





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