This is an example of literal infringement, and there is no need to resort to the doctrine of equivalents. The new competitive
product falls squarely within the coverage of your patent. To stop the infringement, you may now proceed into the world of
litigation, with all of its associated and attendant issues, the discussion of which is beyond the scope of this article.
Domestic patents can be valuable tools in your business strategy if their limitations and strengths are appreciated. The steps
begin with a well-written disclosure and an equally thoughtful analysis of what is patentable, as well as a consideration
of prior art to determine the patentability of the invention. Early in the evaluation process, it is critical that blocking
patents be identified, to permit your research and development team to explore alternatives while there is still fluidity
in your game plan. As commercialization approaches, to avoid any potential for treble damages, an "opinion of non-infringement"
is critical. Finally, if all relevant information has been brought to bear at an early stage, the resulting patent can be
an invaluable enforcement tool in that it is one of the few monopolies granted by the federal government. This monopoly permits
the patent owner to exclude others from making, using, selling, or offering for sale the patented invention. It is a powerful
right to any patentee.
1. Hoffman F, inventor; Farbenfabriken of Elberfeld Company, assignee. Acetyl salicylic acid. US patent 644 077.
1900, February 27.
2. Graver Tank and Mfg Co v Linde Air Products Co, 339 US 605 (1950).
3. Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co, Ltd, 2000 US App. LEXIS 29979 2000, November 29.
4. Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co, Ltd, 535 US 722 (2002).
5. Hilton-Davis Chemical Co v Warner-Jenkinson Co, 62 F3d 1512 (Fed Cir 1995), cert granted, 116 SCt 1014 (1996), rev'd and
remanded, 520 US 17 (US 1997, March 3,) (No 95-728).
6. Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co, Ltd, 344 F3d 1359 (Fed Cir 2003).
7. Sage Prod v Devon Indus, 126 F3d 1420 (Fed Cir 1997).
8. See http://
Robert E. Pershes, J.D., is a registered patent attorney, licensed professional engineer, and partner and member of the Intellectual Property Group
focusing on litigation at Buckingham, Doolittle & Burroughs LLP, 2500 North Military Trail, Suite 480, Boca Raton, FL 33431,
561.999.3083, fax 561.252.5553, firstname.lastname@example.org
Louis F. Wagner, J.D is a registered patent attorney and a partner and co-chair of the Intellectual Property Group at Buckingham, Doolittle &
Burroughs LLP, 50 South Main Street, P.O. Box 1500,Akron, OH 44309, 330.258.6453, fax 330.252.5452, email@example.com