Patent Infringement Damages Are Only As Good As The Underlying Patent

Patent infringement damages are only as good as the strength of the underlying patent.  The patent damages expert assumes that the litigated patent is a valid patent and that it has been infringed. It is up to the attorney to win or lose the liability phase of the trial. Winning or losing liability sometimes can be effected by the expertise of the attorney presenting the case but is mostly driven by the strength of the underlying patent and its claims.

According to the Office of the General Counsel for North Carolina State University, the entity which defends the ownership rights of products/services invented by university employees, a U.S. patent gives the inventor “the right to exclude others from making, using, selling or offering to sell an invention within the U.S. for a certain period of time.” Patents, by type, are labeled “utility…design…(and)plant.” The federal statute containing this definition is 35 USC 154(a)(1).

With regards to what inventions can be patented, U.S. law 35 USC 101 explains that “a new…process, machine, composition of matter, or an improvement on such items” may receive a patent after application to the United States Patent and Trademark Office (USPTO). These new products and processes must also be “useful…novel (very different from all earlier, similar products/processes)…(and) non-obvious (‘surprising and significant’)” to a person who has “ordinary inventor skills.”


  • UTILITY PATENTS–cover the “working features” of an invention,
  • DESIGN PATENTS–cover the “aesthetic appearance,” but not specifically how the invention works,
  • PLANT PATENTS–cover man-made (asexual) changes to (growing) plants, if these changes are “novel” and “non-obvious.”  Some “genetic” plant alterations may receive “utility patents”–if these changes meet the complete “utility” patent definition.

PATENT TIME LIMITS — Statute of Limitations

According to 35 USC 154(a)(2), “utility patents last for 20 years from the date of application filing,” and design patents continue “14 years from the date granted (35 USC 173).”

Steps To Make a Great Idea Patentable

For an inventor to legally own a patent, his/her unique, useful idea must first be “reduced to practice.” This means the inventor must “physically construct” his imagined product and test it enough to ascertain that it works as designed. This initial product-development step is called “actual reduction to practice.” A second step–labeled “constructive reduction to practice”–means the inventor completes his USPTO application in such a detailed way that any person “reasonably skilled in the art (industry)” which includes the product is able to “make or use” this new invention.

Swiftness of Application

An inventor may “lose the right” to his/her patent (see 35 USC 102(b)) if application to the USPTO is not turned in within a year from: 1) the general public’s “first use” of the product, 2) the product’s first “offer for public sale,” 3) the “first printed publication” regarding the invention and its uses and specifications.

Patent Infringement

A person who succeeds in patenting a product/service/composition is able to enforce its “limited monopoly” granted by the USPTO by suing expected infringers for “civil damages.” Damages may include lost profits, reasonable royalties, and/or actual damages and potentially attorney fees depending on the type of patent infringed and the particular facts and circumstances of your case.  In addition to economic damages the judge may also order (i.e., an injunction) the infringer to stop manufacturing and marketing their product until the case is decided and even beyond.

Patent infringement, unfortunately, is common. Finding an experienced and credentialed patent infringement damages expert is not as common.  When engaging an expert witness in a patent infringement matter you should ensure that they have the requisite knowledge, expertise, and experience to conduct the analysis, report the analysis and testify to that analysis. Patent infringement litigation is expensive, you do not want to be in a situation where you have prevailed on liability but are unable to present a damages case because your expert was precluded from testifying due to their lack of knowledge, training or expertise or the analysis was not sound. Hire the best patent damages expert witness you can.

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