What can I do if someone is infringing my patent?
You can begin patent litigation to enforce your patent rights.
So, you found that some company out there is selling your invention. You worked hard on this, and you’re working on getting your fledgling startup off the ground. What can you do about it?
Your Invention Needs to be Patented
Before you think about suing anyone, if you have not yet applied for patent protection, you need to know whether obtaining a patent is still feasible for you and if it could provide an avenue to address this situation down the road.
We’ll assume you’ve patented your invention. The patent itself doesn’t give you any sort of go-ahead to actually launch your service or product. Rather, it gives you the right to prevent anyone else from making, using, or selling your patented invention (more on why I bolded this later) in this country.
On to Litigation
If patent “prosecution” is the domain of obtaining patents (a word I’m sure you’re sick of hearing if you’ve been through it!), patent “litigation” is the world you are now entering if you’re looking to enforce your patent. A word of caution, patent litigation can get very expensive and take a very long time if you have it in mind to go all of the way to trial, which is why in most cases it’s important to have a strategy in place that provides you and your infringer ample opportunities to settle early.
Anyways, the first step you’ll want to pursue does not involve demanding anything from the alleged infringer at all. You will need to perform what is called an infringement analysis. An infringement analysis, almost necessarily done by an experienced patent attorney, breaks down the claims of your patent, and helps determine the chances that the allegedly infringing competitor’s product actually may infringe on your claims. This often involves a fairly detailed analysis and the preparation of a claim chart. Earlier I mentioned the importance of what invention you have patented—part of this analysis will reveal what exactly the scope of the patented invention is (it is usually much broader than your product or service itself). Furthermore, you’ll want to check to see whether your product or service actually falls within your patent as well—as this can have an impact on a damages calculation. In some cases, the patented invention does not cover yours or the competitor’s product or service—you’ll find that out at this stage. Only after analyzing whether your competitor’s product might actually infringe your patent are you ready to use the time and treasure necessary to embark on enforcing your patent.
After you’ve completed an infringement analysis and found that your competitor’s service or product does arguably infringe on your patent, you may want to jump to filing a complaint in Federal Court. While this is the right strategy in some cases, in many more, after formulating a strategy the next step is preparing a cease-and-desist letter and sending it directly to the alleged infringer. These letters can get quite complicated and vary greatly depending on what your enforcement strategy is, but the essence is to alert the alleged infringer to their allegedly infringing activity.
Sometimes a cease-and-desist letter may be sent earlier than completion of a formal infringement opinion due to timing concerns (but usually in no case before you’ve completed relevant parts of the analysis itself). This notice is important—critically so if you haven’t marked your patented product—to alert the alleged infringer to a variety of things, including among other things that the potential damages meter is running, and that they need to implement a litigation hold on potentially discoverable documents. Often, too, a cease-and-desist letter will include an invitation to negotiate a license (whereby you would receive a royalty) or some other transaction—but this, too, is a strategy decision.
You Need a Strategy
From here, strategies vary too greatly to summarize in a post. It is critical, though, to have a patent litigation strategy, which accounts for your goals, risk tolerance, budget, and potential outcomes. You don’t want to get into patent litigation and have it become a gamebook exercise (for you, at least). From a very high level, if the matter is not resolved in the pre-complaint stage, you would consider filing a complaint in federal district court, conduct discovery, formulate claim constructions, and, in exceedingly rare cases, conduct a trial.