I am currently looking into launching a product, and did some patent research. There is a patent for an idea similar to mine (enough for my idea to infringe some of the claims), but the company doesn't seem to be selling any product that uses the patent. I feel like I heard somewhere that a company has to prove that they are using a patent for it to be valid in court and that they have to prove that the violation is hurting them financially or otherwise.

This may be a simple question, but this is my first time working with patents.

  • 1
    I think that the inventor can do anything with their patent, including not making it commercially available. (The reason that fees increase with time is precisely to discourage this behaviour - which means that this behaviour is legit.)
    – Helen
    Apr 15, 2019 at 15:26
  • @Helen Failure to pay maintenance fees can cause a patent to expire early.
    – Eric S
    Apr 15, 2019 at 19:33
  • @EricShain, definitely, but how is this related to the question? My point is that it is legit, even if not a good idea, to sit on one's patent. As long as they pay the fees the patent is not free.
    – Helen
    Apr 15, 2019 at 22:49
  • 1
    @Helen I misinterpreted your comment to suggest it is common for persons keeping non-commercialized patents to not pay maintenance fees. I just wanted to clarify that non payment of fees causes the patent to expire. It would have been helpful if the questioner to provide the patent number so we could investigate its status.Many times people mistake applications for patents, and applications typically have much broader claims than the resulting patent.
    – Eric S
    Apr 15, 2019 at 22:57

2 Answers 2


Yes, a patent owner can sue even if they aren't currently commercializing their patent. What you heard "somewhere" is wrong, at least in the US and I believe most other countries. However, don't be too quick to assume you are infringing on a patent. To infringe, you must implement each and every step of a claim. It is often possible to design around patents with careful engineering. Also, patents are territorial so a US patent doesn't cover Canada, for instance. Patents expire so you have to determine if the patent is still active and all maintenance fees are up to date. If you can provide the patent number of the patent you are concerned with, we can help you determine if it is still active. Freedom to operate opinions are best provided by qualified patent attorneys.

If you determine the patent is still in force and impossible to circumvent, the next logical step is to inquire about licensing the patent. This can be an advantage to you in that if you obtain an exclusive license it potentially keeps competitors out of the market.

  • “What you heard "somewhere" is wrong“ - actually, if I remember correctly it's correct somewhere, India maybe, or so I think.
    – user18033
    Apr 16, 2019 at 19:56
  • @DonQuiKong I added a little text to soften the statement. Hopefully you feel comfortable with the edit.
    – Eric S
    Apr 16, 2019 at 21:34
  • Sure, it was just meant as a reminder that there are many obscure provisions around the world ;)
    – user18033
    Apr 17, 2019 at 15:47

In addition to @Eric Shain answer I would like to add point about damages awarded. In case a patent owner is marketing the product then the damage award would include the royalty and lost profits of the patent owner if infringement is proven. In the case no product is involved then the damage award would include only reasonable royalty.

  • Can you comment about willful infringement? My understanding is if you have a legal opinion of freedom to operate or can prove you didn't know of a patent the damages are less than if you willfully infringe. If this is true, you might want to add it to your answer as the OP clearly knows of the patent in question.
    – Eric S
    Apr 16, 2019 at 13:08
  • @Eric Shain there is a recent article published in Ipwatchdog that would be the best as it's written by an attorney here is link ipwatchdog.com/2019/04/13/…
    – RishiM
    Apr 16, 2019 at 13:39

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