What To Do if You Receive a Patent Infringement Notice – Part 1
Insights June 6, 2011
Patents have many legitimate strategic uses, which seem great until you receive a letter or notice from someone claiming you are infringing one or more patent claims.
The following are some actions that can be taken by a business after receiving such a notice.
(1) Quick Check – Review the limitations of each asserted independent claim to determine if there are any required limitations clearly not found in your product or service. Although I recommend working with a patent attorney, the initial review can be done by someone familiar with both patents and the technology to determine if there may be a component or method step required by the claims and not found in your product or service. This will provide a quick assessment of the threat level and whether the letter is a mass mailing or something more serious.
(2) Design Around?– If (1) determines that the asserted independent claims may cover your product, determine whether there is an easy way to redesign your product to make it clearly non-infringing? Determining this early can help frame your strategy going forward.
(3) Ownership & Status? Confirm who really owns, or has owned, the patent and whether there are co-owners. There may be another entity able and willing to license the patent to your company. For example, is there a listed inventor who didn’t work for the patent assignee and might not have assigned his or her IP rights to the entity asserting the patent? Or, was the patent acquired from another company that retained some IP rights including the ability to assign or sublicense to your company? Evaluating the chain of ownership can sometimes yield alternate paths to a license under the patent. Has the patent been maintained or has it been abandoned for failure to pay a fee? It’s rare, but easy to check and worth doing.
(4) Counterpunch – Does your company have any patent(s) that can be used to cross-license or counter-sue? If not determine whether your team can innovate ahead of one of the other company’s products (e.g., improve one of their important products and file a patent application for possible future cross-license) or try to acquire from a third party?
(5) Invalid?– Perform a thorough prior art search to determine if the asserted patent claims are valid. It’s important to keep in mind two things. First, patent examiners have very limited time to research whether a patent application is patentable so performing a more thorough search can sometimes yield “knock-out” prior art. Second, the standard for patentability has recently been changed by Supreme Court decisions. As a result, a patent granted several years ago under the old standards (e.g., the former standard for “obviousness”) might not be valid today under the new standard. Also review the claims for any other invalidating defects. Review the file history of the asserted patent for any vulnerabilities including reviewing any and all related applications. Not only does the US Patent Office sometimes make mistakes, so do inventors or those prosecuting the patent application.
One of the most critical actions, forming the right team, will be addressed in Part II.