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With more than 300,000 patents granted in 2022 in the US alone, patent infringement is today’s reality. In fact, around 4000 patent lawsuits are filed each year in the US. That is why it is important to exercise caution to ensure your invention stays legally compliant.
However, what if you find someone infringing your hard-earned patent? Or what if you come across a letter that startles you with an accusation of patent infringement? Both cases require you to meet with your attorney to decide on the best course of action. Let’s take a deeper look into the strategies you can adopt in both these situations.
What is Patent Infringement?
Patent infringement occurs when a third-party makes, uses, offers to sell, or imports a patented entity during the term of the patent. Different jurisdictions cover patent infringement under a set of differing laws such as the 35 U.S. Code § 271, that deals with patent infringement in the US. It entitles the patent owner to file a civil lawsuit against the infringer to claim compensation or obtain injunctions regarding further infringements of their patent.
There are certain elements that must be necessarily fulfilled to prove a patent infringement. They are:
1. Ownership of a valid patent: The plaintiff must prove ownership of the patent regarding registration with a patent agency such as USPTO.
2. Validity of the patent: A defendant sued for infringement will often try to prove the patent invalid on certain grounds. Therefore, the plaintiff must be prepared to demonstrate how the patent in question is valid by proving that the patent is unique due to no prior art or that the patent claims leave no room for misinterpretation.
3. Identifying the infringer: All parties that infringe the claims of a patent must be identified as defendants. Depending on how many parties are involved, this can be a humongous task.
4. Identifying the infringement: The bonus is upon the plaintiff to identify exactly how the defendant has infringed upon one or more patent claims.
When you are being infringed upon
What if you discover someone infringes your patent? Several legal remedies can act as a power-shield to protect your IP rights.
Send a cease-and-desist letter: A cease and desist letter officially asks the infringer to cease the production and sales of the infringing entity.
Negotiate an agreement: Negotiating with the infringer on a licensing agreement can be a cheaper and quicker way of resolving a patent infringement claim. You can also go for a “negotiating while suing” strategy to expedite a resolution in your favor.
Demand Injunction: An injunction is a court order that can prohibit the infringer from making, using, selling, or importing the infringing product either temporarily or permanently. You can also ask for the destruction of all existing infringing entities.
Claim Compensation: Once a lawsuit is filed, you can claim adequate compensation from the infringing party, sometimes even legal fees.
When you are accused of infringement
If you have been accused of infringing a patent, you must understand the consequences that come with it and your defenses against such a claim.
The consequences of being found guilty in a patent infringement trial can cost you millions. If you are proven guilty of infringing a patent, you would be entitled to pay for damages to the plaintiff. These can include compensatory damages (including damages for lost profits, injunctions and, in some cases, even criminal sanctions. If the court asserts the infringement is willful, the compensation amount may be increased manifold.
With all the woes that come with being stuck in the quagmire of a patent infringement claim, you need a solid defense strategy to establish you did not violate IP laws. Your attorney will work on a suitable defense to establish you as not guilty of violating patent rights. This can be done by:
- Proving non-infringement: Involves establishing that your product or invention does not violate the patent claims.
- Proving invalidity: Another common defense against patent infringement is establishing to the court that the patent is invalid. You can do this by proving that the defendant did not disclose sufficient information to the examiner or finding relevant prior art.
- Negotiation: Negotiating with the plaintiff to find a way out can help settle the claim. Other defenses may include a first sale or repair doctrine or bringing up experimental issues. Your attorney will help you devise the best strategy for your patent infringement defense.
Prevention is better than Cure
Preventing patent infringement in the first place is crucial not only to save you thousands of dollars on legal fees, but also to preserve the time and effort of your R&D team and save your customer relationships.
Let us examine a few ways to prevent patent infringements:
- Carry out a Freedom-To-Operate-Search: The best starting point for preventing patent infringement is carrying out an FTO to determine if your product does not violate any existing patents. The best time to conduct an FTO is when your product is at its concept stage.
- Design a workaround: Once you and your attorney have analyzed potential patent claims you may be violating, try finding a workaround for your invention so that it no longer violates any independent claims or, by the Doctrine of Equivalents, a non-literal patent infringement. Depending on your invention, this may be a tedious step to take.
- Avoid copying: Exercise due diligence when copying competitor’s features as it can result in patent infringement claims and long litigations.
- Add Litigation Analysis to your landscape study: Having a good idea of how the litigation landscape is in each area that you are considering entering can be critical to your product strategy. Read More on why you should include this analysis in your IP landscapes.
Need for thorough examination during prosecution
During patent prosecution the PTO evaluates how well a patent meets patentability criteria of inventive-step and non-obviousness, apart from other things such as whether the invention is clearly and sufficiently described in the specification and drawings. Patent prosecution, despite all the time and effort it takes, can sometimes lead to inaccurate patent grants. Such grants give rise to complex issues surrounding their validity, legal skirmishes, and an overall waste of time and resources. A patent must ideally be as clearly described and as thoroughly examined as possible before being granted.
Conclusion
Patent infringement lawsuits are a massive drain on money, resources, and time for all parties involved. Your best bet against being on the receiving end of such lawsuits is to prevent patent infringement in the first place while maintaining a robust IP strategy right from ideation to commercialization.
