Will my prototype infringe on a patent if it includes patented elements?

A common question I get as a patent attorney located in Austin, Tx, is “will my prototype infringe on a patent, trademark, or copyright if it includes patented/trademarked/copyrighted elements?”

This question arises when inventors create prototypes that includes elements that have already been patented/trademarked/copyrighted.  For example, if an inventor’s invention is directed towards a more efficient or ergonomically mouse for a computer, an inventor may first purchase a mouse from best buy and then modify the mouse to be more efficient or egronomical.

Although the mouse may be patent/copyrighted/trademarked the inventor may develop his prototype without fear of being sued under a patent infringement or copyright/trademark infringement because of the “exhaustion doctrine” and the “first sale doctrine,” respectively.

The exhaustion doctrine is a common law patent doctrine that can be used as a defense against patent infringement if a person legally purchased the patented product.

Typically, when an inventor obtains a patent he can exclude others from making, selling, using, importing, and exporting his claimed invention during the patent term.  By creating a monopoly for inventions via patent protection inventors are able to monetize their invention.  Therefore, courts have determined that if a patent product is sold, the inventor who created the product has been able to monetize his invention and cannot further restrict the use of the purchased product.  Although, the person reselling the product does not have patent rights to the product, the reseller has already purchased the product, and thus the patent holder has recouped investments via the first sale and cannot further limit the resale of the product.

Analogous reasoning can be used for when people resell patented products on Amazon or any other marketplace or when Netflix rents videos.

Similar to the exhaustion doctrine, the first sale doctrine limits the rights of copyright and trademark owners upon the sale of copyrighted or trademarked worked.  However, there is an upcoming case Kirtsaeng v. John Wiley & Sons that will clarify if people can buy a product overseas at a lower cost, and sell the product in the US.

By | 2012-11-15T16:41:06+00:00 November 15th, 2012|Blog, Copyright Basics, Patent Basics, Trademark Basics|Comments Off on Will my prototype infringe on a patent if it includes patented elements?