A patent-infringement warranty in a contract can be a decidedly non-trivial matter, because:
- You can infringe a patent * without knowing it, indeed without even knowing that the patent exists;
- You can infringe a patent that didn’t exist when you did your product-design work — that can happen if the patent application was still pending when you did your design work, and the patent issued afterwards;
- You can’t manage compliance with a patent infringement warranty merely by making sure your people do their own work.
* Generally, infringement of a patent consists of (1) making, using, offering, or selling • a product or service • that comes within the scope • of any one of the claims of the patent; or (2) by inducing others to do so; or (3) by ‘contributing’ to such action by others.
If you’re asked to give a patent infringement warranty for your product or service, you’ll definitely want to consult patent counsel. You and your counsel might decide you need to commission a patent search and have the counsel provide you with a clearance opinion. That will usually involve non-trivial calendar time and expenses, which of course might have to be factored into your pricing and scheduling for the contract.
In contrast, copyright- and trade-secret warranties are comparatively easy for a provider to manage. Generally speaking, demonstrably doing one’s own work, without improperly “borrowing” from others — that is, proving independent creation — should defeat claims of copyright infringement or trade-secret misappropriation. (FOOTNOTE: Proof of independent creation is great to have, but it’s not necessarily required to prevail against copyright-infringement or trade-secret-misappropriation claims.)
See also: (list is automatically generated)
- Professional-liability insurance policy doesn’t cover patent infringement, says Penn. appeals court
- DataTreasury v. U.S. Bancorp $27 million patent infringement verdict – useful links, a partial defense win, and the patent owner’s bloody-shirt jury argument
- Google sued for patent infringement over Courgette differential compression algorithm
- DVD producer’s copyright infringement suit against non-paying customer dismissed – court holds that parties had intended customer to have implied license to distribute DVD copies
- Monday-morning quarterbacking: How eBay might have negotiated an irrevocable license for Skype’s under-the-hood technology, while leaving ownership with the founders
