Preventing Wilful Infringement

PatAnalyse is taking quite seriously the desire of some US companies to stay away from the minefield of the wilfulness infringement claims

There is also a special advantage of Patent Mapping for companies that are exposed to the risk of a patent infringement lawsuit in the US. These risks are considerable because damage awards can be the highest encountered in private litigation. US courts can increase damages threefold if so-called ‘wilful infringement’ can be proved by the patent owner. So if a company encounters a patent that has a high risk of being relevant to its business the firm has a duty to obtain an expensive opinion from external counsel in order to avoid the accusation of wilful infringement.

One of the factors taken into account is a defendant's 'actual notice' of the particular patent which has been infringed. The concept of 'actual notice' is poorly defined by case law. This vagueness has led many US companies to encourage employees not to read other companies' patents and not to store the electronic records of such patents in internal databases. On February 2006 the USPTO conducted a public meeting with the open-source software community to discuss issues of patent quality and prior art. One of the main concerns discussed at the meeting was related to "wilful infringement danger", where developers would be reluctant to look at any patent data whatsoever for fear of becoming liable for wilful infringement.

To resolve possible concerns our clients can opt to receive the final report without any specific references at the level of individual patents; in such cases we also withdraw from providing clients with both the back-up of the patent portfolio and access to our on-line portal system.

In addition, by default the PatAnalyse multi-client Patent Mapping reports analyse technology trends without reference to any single patent document. Thus subscribers are able to study the competitive landscape while avoiding a subsequent commitment to follow such a report with a set of bespoke Freedom to Operate studies.

The case law has been radically changing in US since ‘In re Seagate’. The new Bill, the “America Invents Act”, approved by the Senate and The House of Representative is moving further:

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent or the failure of the infringer to present such advice to the court or jury may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.