Patent Infringement searches

2. Patent Infringement Searches
 It is conducted to make sure that no organization or individual is
using , making or selling the existing patent.
 It is done before the product or process release.
 It is done to check if there is any violation of claim to any existing
patent claim.
 It is conducted to find the relevant products in specific geographic or
jurisdiction.
 It is also known as claim-chart search.

3. Continued…….
 A patentee (also referred to as an assignee of a patent) is
given the rights to exclude others from making, using,
importing, selling or offering for sale the patented
invention for up to 20 years.
 Patentee/ inventor of the patent can take the legal action if
any infringe is there between the patent and the product.
 Business decision are also made if the infringement is
there.

4. How Patent Infringement is done
 Claim is the section in the patent described in details.
The scope of violation and non-violation is checked from here.
It is analyzed thoroughly in order to find out the infringes on the
patent.
The comparison is made between the patent and the product.
It is said to be infringed with the product when all the claims are
there in the patent and the product.

5. Need for the Patent Infringement
• Claim amendment during the prosecution phase
• Identification of the illegal use of the patented invention
• Licensing opportunities (Licensing-IN and Licensing Out )
• Patent monetization
• Patent pruning

6. Types of Infringement
• Direct Infringement
Direct infringement occurs when a organization or person uses or
sells patented element without any authorization during the term of
the patent.
• In-direct infringement
In-direct infringement occurs when a device is claimed in a patent
and a third party supplies a product which can be reasonably used to
make the claimed devices.

7. Process of Infringement search
1. Break-down the technical features of the claim
2. Determination of the protection of the claim
3. Breakdown the technical features of the product
4. Comparison analysis of the patent is done.

8. 1. Breaking down the technical features of the patent
claim
• Analyze the relationship between the types of independent
claims and terms of the claim
• Split the technical claim and individual claim
• Number them to facilitate subsequent comparison analysis
of patent claims and the product features.

9. 2. Determine the protection of the claim
• Firstly, understand and grasp the specific meanings of the specific
technical features in claims.
• Understand the previous knowledge and background of the
technology.
• Secondly, Collect the details and information of the targeted product
from their official website or from national patent office website.
• Determine Dedication Rule is applicable by studying the various
embodiments and the claims.

10. 3. Breaking down technical features of target
product
It is done by combining the technical features of the claim and the
information of the product structures, manufacturing, indications,
components used to create the product etc.
Number the technical features to facilitate subsequent patent
infringement comparison analysis.
E.g.->

11. 4. Patent infringement comparison analysis
• Comparison is done one-by-one in a form of list and deliver
the comparison, conclusion and brief reasons.
• Then analyze and judge the patent infringement risk
according to the rules of Literal Infringement and Doctrine of
Equivalents.

12. Conclusion
According to the results of patent infringement search analysis, the major
steps are taken in concern with the authorities
1) Bypass the high-risk
This decision is for the product manufactured company to pass the high
risk patent and make changes in their product , and then sell in the market.
2) Waiting for the expiration of obstacle patents
Patent with the strong protection that can not be bypassed, it is generally
recommended to wait for the expiration of the existing patent.
3) Negotiation
Negotiation is done between the patentee and the product manufacturer..
Decision is taken which is best fitted to the business.

13. For example
• There exist a patent of a tube light which can be controlled through
phone and its lights can be changed to red-green-blue. It is all
mentioned in the claim section of the patent.
And there exist a organization who has developed the same product
which is already made. Then the product is violating the patent’s claim
and causing infringement.
“Comparison between the patent’s claim and the product is important
in the patent infringement search.”

14. IEEE Standards Infringes
• The Institute of Electrical and Electronics Engineers Standards Association
(IEEE-SA) is an Operating Unit within IEEE that develops global standards
in a broad range of industries, including: power and energy, consumer
technology and consumer electronics, biomedical and health care,
learning technology, information .
• If a patentee has made or reuse the IEEE standards then they have to take
the permission from IEEE SA
• As a general rule, you will need to request permission to reproduce
content published by IEEE. This may include any text, graphics,
tables, or other material from an IEEE publication.
• Permission can be requested and approved online in minutes
through IEEE’s partnership with RightsLink®, the automated
permission granting service from the Copyright Clearance Center.

15. • The new IEEE-SA patent policy was developed by the IEEE-SA
standards board Patent Committee (Pat Com) as a Recommendation
• Before Incorporation into the official IEEE-SA standards bylaws,
Operation Manual and Letter of Assurance documents has to be
filled.
• Essential Patent claims is required which means the use of which was
necessary to implement either mandatory or optional portion of a
normative clause of the IEEE Standard.
• A patent call is made by the IEEE standards meeting to Patent Claims
might be Essential Patent Claims, that fact should be made known to
the entire Working Group

16. Inclusion of patent claims in standards
Essential Patent Claim
– In issued or pending patent applications
– Either mandatory or optional portions of standard
– Determined as of time of the standards approval
• Necessary to create Compliant Implementation
•Letter of Assurance only applies to the Essential claim of the patent
• Letter of Assurance is the only acceptable templates.
• Letter of assurance is accepted or denied by the IEEE SA
• Patentee needs to inform the IEEE aware and that are not already the subject of an Accepted Letter of
Assurance, that are owned or controlled by the participant
• Timing of LOA also matter , it should be done as soon as possible when PAR is approved by the IEEE boards
• This LOA should be provided prior to the Standards Board’s approval of the standard.

17. Licensing Assurance not obtained
• If there is no Accepted LOA for an asserted potential Essential
Patent Claim:
– Inform IEEE-SA Standards Board Patent Committee (PatCom)
• PatCom will consider
• May make recommendation to IEEE-SA Standards Board
– Ultimately IEEE-SA Standards Board will decide

18. References
• https://en.wikipedia.org/wiki/Patent_infringement
• https://www.google.com/search?q=infringement+search+process&o
q=infringement+search+process&aqs=chrome..69i57j0i333l3.9386j1j
7&sourceid=chrome&ie=UTF-8
• https://www.law.cornell.edu/wex/direct_infringement#:~:text=In%20
patent%2C%20direct%20infringement%20occurs,term%20of%20the%
20patent%20therefor.
• https://www.youtube.com/watch?v=SA3akk41D58
• https://www.youtube.com/watch?v=_pLRxKyTja4
• https://standards.ieee.org/about/policies/bylaws/sect6-7.html