Best Things to Do When Accused of Patent Infringement
The time may come when you receive a letter saying you might be infringing someone else’s patent or published application. Our expert, an experienced patent attorney, provides this list to help you cope with the accusation.
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The time may come when you receive a letter saying you might be infringing someone else’s patent or published application. Our expert, an experienced patent attorney, provides this list to help you cope with the accusation.
- Don’t panic! (with a tip of the hat to the Hitchhiker’s Guide to the Galaxy)
Just because someone says you might be infringing on a patent (or a published application) does not mean that you are. In many cases, it turns out after investigation that the accused product does not infringe at all. Even if you are infringing, it’s not the end of the world. Calm down, take a deep breath, and follow along.
- Call a lawyer, immediately, and make an appointment
Patent infringement accusations are not “do-it-yourself projects”. You need professional advice, and you need it right away. Don’t expect the lawyer who wrote your will or represented you when you bought your house to be of much help. You need a patent attorney or a litigator with a patent attorney on call.
- While you’re waiting to see the lawyer, get your ducks in a row
The infringement accusation should have listed the number of the patent you are accused of infringing. Go to the U.S. Patent and Trademark Office website (patft.uspto.gov) and download a copy of the patent.
- Be prepared to discuss certain questions
Have you made, used, or sold anything since the date of the patent that might be covered by the patent? Is there any part of the independent claims that your products clearly lack? When did you start selling your potentially infringing products? Was it more than a year before the filing date? Do you know of anything that was published more than a year before the filing date of the patent that describes the same device or method in the patent? Since the patentee’s own sales are covered by the same 1-year bar, do you know they were selling more than a year before they filed for their patent?
- Do some research
Look at old catalogs, advertisements, magazines, trade publications, even bid documents if you sell to government agencies. Do an Internet search and see if you can find any web pages that describe the patented invention and that might predate their filing.
- Bring all of the documentation to your appointment with the attorney and have him or her explain your situation
You will probably have over-reacted by this time—use this appointment as a reality check. Before you leave the attorney’s office, make sure you understand exactly where you stand, as best as can be determined at that time. Know what you will need to do, what the risk is, and what your attorney will be doing.
- Your attorney should contact the other side’s attorney to let them know that they’re not being ignored
Whatever you do, don’t try to handle the contact with the other side yourself. This situation needs to be handled by people who don’t have an investment of ego, on either side.
- Ask your attorney do an infringement analysis of your products and the patent
This analysis will take some time, and it will not be cheap; but you must have an infringement analysis (and maybe a validity study as well) if you are not simply going to go out of business at the first accusation. That’s an option, of course, but if you were going to take it, you wouldn’t be reading this list, would you? The attorney will probably have to order a copy of the prosecution history of the patent to properly interpret the claims. He or she may want to do a patent search to find invalidating art and will formally need to compare the claims in the patent to your product. If you are infringing the patent, your attorney may tell you informally. If not, your counsel should give you a formal written opinion that you can rely on if you are sued for infringement. The opinion won’t insulate you from liability for infringement, but it will most likely keep the court from increasing damages for “willful” infringement.
- Listen to the attorney’s advice
Your attorney is on your side, and you’re paying for the advice. Listen to it.
Source: Michael F. Brown (www.bpmlegal.com) retired in 2017 as partner in the Ithaca, New York, law firm Brown & Michaels PC. Contact the firm at 607-256-2000; Chris Michaels’ email: michaels@bpmlegal.com.
