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Author
Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer

05 July 2022

How to find out if a competitor is infringing your patent for an invention or utility model?

To find out if a competitor is infringing your patent for an invention or utility model, you first need to understand what the “infringement” of a patent for an invention or utility model is. The answer to this question is in patent law. In accordance with Article 1358 of the Civil Code of the Russian Federation, the use of an invention, utility model or industrial design is considered, in particular:

  1. import into the territory of the Russian Federation, manufacture, use, offer for sale, sale, other introduction into civil circulation or storage for these purposes of a product in which an invention or utility model is used, or a product in which an industrial design is used;
  2. the performance of the actions stated in the paragraph 1 regarding a product obtained directly by a patented method. If a product obtained by a patented process is new, an identical product is considered to be obtained by using a patented process, unless proven otherwise;
  3. the performance of the actions stated in the paragraph 1 regarding the device, during the operation of which, in accordance with its purpose, the patented method is automatically carried out;
  4. the performance of the actions stated in the paragraph 1 regarding the product intended for its use in accordance with the purpose specified in the claims, while protecting the invention in the form of the use of the product for a specific purpose;
  5. implementation of the method in which the invention is used, including by applying this method.


An invention is considered to have been used in a product or method if the product contains, and the method uses, each feature of the invention listed in an independent claim contained in the patent claims, or a feature equivalent to it and which became known as such in the art prior to the priority date of the invention.


A utility model is recognized as being used in a product if the product contains every feature of the utility model listed in an independent clause of the utility model formula contained in the patent.


As can be seen from the norm of patent law, a patent infringement is the use of: for utility models - each feature of the utility model given in the independent clause of the utility model formula contained in the patent, and for inventions - each feature of the invention given in the independent clause of the claims contained in the patent, or a feature equivalent to it and known as such in the art prior to the priority date of the invention. Always keep these differences in mind!


Thus, to determine the fact of patent infringement, it is necessary to make a comparative analysis of the features of an independent claim or utility model and determine their presence/absence in your competitor's product/method/technology. To do this, a comparative table is compiled, in one column all the features of the independent claim of the utility model or invention are listed, including the generic concept or name of the invention/utility model, with which the presentation of the independent claim of the invention/utility model begins, and the purpose, and in the other column are given features of a competitor's product in which, in your opinion, all the features of the invention/utility model are used or present/contain.


The next question is whether this feature is contained one-on-one for utility models, and one-on-one or a feature equivalent to it, and known as such in the art before the priority date of the invention, in a competitor's product? The answer must be unambiguous (“yes” or “no”) on each feature of an independent claim or utility model. Next, we evaluate our responses. If you received an unequivocal answer “no” for at least one sign, then your competitor is more likely not to infringe your patent.


However, in order to unambiguously assess the fact of patent infringement, it is necessary to contact a qualified patent specialist who will take into account all the subtleties and nuances of the legislation and give a legal opinion on patent infringement.


In addition, it should be taken into account that only one embodiment of a specific technical solution can be protected by a utility model patent, and a utility model claim can contain only one independent claim. Therefore, it is necessary to analyze one claim, namely, the features of an independent claim, and the competitor's product.


As far as the invention is concerned, an independent claim can be drafted in such a way that it protects a huge number of alternative solutions. In this case, it is necessary to analyze all possible options, since a patent can be infringed, for example, only in part of the alternatives or in one. Note, that the presence of an infringement in one alternative indicates infringement of the entire patent. At the same time, the claims may also include several independent claims, and in order to determine the fact of a violation, it is necessary to conduct a comparative analysis of the totality of the features of each independent claim. The absence of a violation of one independent claim does not mean that your competitor does not violate the other or other independent claims.


Consider patent infringement on a specific example of utility model patent 124121.


You are the owner of a utility model patent No. 124121 with the following formula of the utility model: “Shoe insole, consisting of upper, inner and lower layers fastened together, characterized in that the inner layer is made of thermoplastic polymer material with a thickness of 2.0 ± 0, 5 mm, and the upper and lower layers are made of non-woven material with a thickness of 0.05-0.5 mm, while the layers are connected by thermal compression.”


Your competitor makes shoe insoles with three layers, the top and bottom layers are 0.3mm thick non-woven fabric; the inner layer is made of a thermoplastic polymer material 1.5 mm thick, while all layers are glued together by applying a layer of glue at room temperature, keeping under pressure for 2 hours.



So, we determine the presence of all the signs of an independent claim of the utility model in the competitor's product, for this we compile a comparative table:

Thus, from the presented table it can be concluded that the competitor's product does not contain every feature of the utility model listed in the independent clause of the utility model formula contained in the patent. Therefore, the patent is not infringed.


However, in our practice, there are often cases when a product contains each feature of a utility model listed in an independent claim of the utility model formula contained in the patent and additionally one or more features. What conclusion should be drawn in this situation - is the patent infringed or not?


Let's say a competitor produces an insole not three-layer, but four-layer. A membrane sheet with a thickness of 0.2 mm is used as an additional layer . At the same time, there is an inner layer made of thermoplastic polymer material 1.5 mm thick, upper and lower layers made of non-woven material 0.3 mm thick, while the layers are connected by thermal compression.


In this case, we can definitely say that the patent is violated, despite the fact that the competitor has only 4 layers in the insole, unlike the patented one, which has only 3 layers, but the competitor uses all three patented layers with the specified parameters and connection method. If you make a table, by analogy with the one indicated above, it will be clear that the patent is infringed, since each feature of an independent claim of the utility model formula is used.


In conclusion, you should pay attention to the following rule: if the utility model formula consists of features A + B + C, and a competitor uses a product containing A + B + C, but he also has + D , then the competitor will always infringe the patent.

If the independent claim of the utility model formula consists of features A+B+C+D, and the competitor uses only a part of this combination (A+B+C, or B+C+D, or A+B+D, or A+B+D+E) - that is, only part of the features from the independent claim utility model and / or part of the features + added something else of his own, then in these cases the patent is not violated.


If we evaluate the fact of infringement of a patent for an invention and conduct a comparative analysis of independent claims, including alternatives / variants and claims, including several independent claims, then it is necessary to take into account the theory of equivalents, which is more complex than utility models, requires certain knowledge and experience and only highly qualified patent specialists can do it.


Therefore, to identify the fact of patent infringement, it is better to contact patent attorneys who know all the subtleties and nuances, evaluate all the pros and cons and prepare a legal opinion based on knowledge of patent law and the approach used in a particular field of technology.

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