Patent Law

Peter A. Elyjiw of the Toronto office of Smart & Biggar wrote the above titled article on January 16, 2008.  The following is an excerpt from this article:

Most people are aware that there is no such thing as a ?patent police?. The duty of monitoring the marketplace for infringement of a patent falls on the shoulders of the patent holder. If this duty is not fulfilled, then the patent cannot be used to stop others from making, using or selling the relevant invention, because the identity of the ?others? will not be known.

Monitoring the marketplace for infringement typically involves a non-trivial investigation effort on the part of the patent holder. The reason is that infringers rarely trumpet their infringing activities. What is not widely appreciated, however, is that the amount, complexity and cost of such investigation can vary significantly depending upon the nature of the invention that is claimed in a patent.

In some fields, there may be no getting around the practical difficulty of detecting patent infringement. For example, patents for computer-based inventions are often directed to the inner workings of computer hardware or software, which may not be readily apparent from the operation of an infringing device. Reverse-engineering competitors? products may provide insight as to whether infringement is likely. Indeed, companies whose primary purpose is to reverse-engineer products (e.g. Ottawa-based Chipworks) have arisen, likely in part to satisfy this need. The cost of reverse-engineering, which may be significant, might be justifiable as likely paling in comparison to the cost of doing nothing, in terms of potential lost revenues resulting from an infringing competitor product. At least in the case of software, however, many end user licences now expressly bar reverse-engineering. Perhaps as a consequence, the number of patent applications directed to the graphical user interface (?GUI?) of computer-based products has increased in recent years, with the rationale being that GUI features are more easily spotted in competing products.

Read the full article here.