Unauthorized Use of Registered Inventions

To establish a violation, the patent in question must be officially registered with the USPTO (U.S. Patent and Trademark Office), active (not expired, canceled, or invalidated), and clearly defined in its claims to include the conduct in question. If the patent is found to be unenforceable or expired, or if the claims are ambiguous, then legal liability for the use of the invention does not attach.

The "scope" refers to the specific elements and processes that the patent legally protects, meaning a use is considered a violation only if it mirrors the claims described in the patent. A violation also only occurs if the user has no legal right to use the invention, specifically excluding lawful licensees, users covered under statutory exemptions, or entities using expired or invalidated patents. Commercial use by individuals or businesses without a proper license constitutes unauthorized use.

Direct violation occurs when someone directly uses, manufactures, sells, or imports the patented invention in New York for business purposes without authorization, making it the most straightforward form of infringement. The unauthorized action must fall squarely within the explicit, literal claims of the patent, such as manufacturing an identical product or using the exact patented method.

Even if a product or method is not identical to the patented invention, if it performs substantially the same function in substantially the same way to yield the same result, it may be treated as equivalent under the Doctrine of Equivalents. Courts in New York accept this doctrine under federal law interpretation to prevent infringers from making minor, non-essential changes to avoid liability. Furthermore, indirect infringement can involve inducing or contributing to another's direct infringement.

Civil penalties remain the primary legal consequence, with courts having the power to award various forms of compensation to the patent holder. Actual damages (based on profit loss) and reasonable royalties are the standard awards, though courts may award treble damages (three times the actual damages) for willful acts of infringement. Additionally, the court may issue an injunctive relief (stop order) to immediately cease the infringing activity.

If a corporation infringes on a registered invention, both the company and responsible managers may be sued, as corporate entities do not have immunity simply by being a business. In federal courts operating in New York, enhanced penalties often apply if corporate willfulness is shown, underscoring the legal expectation that businesses conduct due diligence regarding intellectual property rights. Even if an individual or entity did not realize their conduct infringed a patent, they may still be liable, as lack of consent constitutes the core of the violation.

A written warning to the infringer is crucial and should include the patent number, registration details, evidence of copying or unauthorized use, and a clear demand to stop use and resolve damages. The standard legal path includes this pre-litigation notice, followed by filing a federal lawsuit (since patent law is federal), the court evaluation of infringement and damage, and finally, judgment and potential appeal. Many cases often bypass a full trial through strategic settlements to avoid publicity and high legal costs.

Some key defenses can be raised by accused parties, such as proving the activity was purely private or domestic use with no commercial aspect, which New York courts typically do not deem infringement. Liability may also be reduced or avoided if the defendant acted under the belief of having a valid license or was using the invention for non-commercial research under fair use principles. Furthermore, if the patent holder fails to provide timely notice or defend their rights within the statute of limitations, legal enforcement may be limited.