Patent Attorney and Founder
I’m ready I’m J.D. Houvener , your host of the Bold Today Show where you, the inventor entrepreneur business owner, get your daily dose of inspiration to make the world a better place.
Alright, you’ve made it through. This is part five, this is a Friday morning. Let’s go get it.
You’re a startup, you’ve got a new technology and you’ve got a new passion right? This is the stuff you’ve got to hear about this week. You’ve heard about all the good stuff from patent searching, non-disclosure agreements, provisional, non provisional, and even how to make money. What’s left? Enforcement – right, how you’re gonna actually go take care of business if you’ve got to go sue an infringer.
Take a look online at boldpatents.com. We still have available for free download a PDF copy of Bold Ideas: The Inventor’s Guide to Patents and if you’re old-school like me you can actually have a hard copy sent to you we’ll do that for free. Take a look at chapters 21 and 22 – those chapters dig into a lot more detail than we’re going to today about enforcement and the three major areas where you can do that. So check out the book today if you need a copy you can go on the website or call us at 818-338-6377.
There are three forums to take an infringer to if you’re on the defense side, if you’re being sued, maybe you’ve received a cease-and-desist letter saying “Look, you’re infringing a patent right you must stop operations. We demand that you give us royalties or give us back payment for damages,” whatever it is they state. You have the position to potentially take them to the Patent Trial and Appeal Board. That’s the PTAB where judges look at patent cases all day. It’s a very predictable way to move your case forward to try to invalidate the patent that’s being asserted against you.
The PTAB is a wonderful way for a patent holder also to take their patent to the case to sort of reinvigorate into what’s called “do a post grant review or a supplemental review” to make sure that the rights that you have, maybe you’ve had them four or five years, are still valid and you can bring them to trial at the federal courts. That’s number two – taking someone to federal court. That is the ultimate way to seek damages if you’ve got an infringer that is out there in the market ripping your product off. Take them to federal court, or at least threaten to do so and seek settlement. Federal court is the number one place where you want to go to make sure you get damages. Because if they’ve been infringing for a while and you can prove that they’ve been willfully infringing, you not only get your attorneys fees paid for, but you get triple damages because they really didn’t do anything. They didn’t appreciate the fact that you had invented this product. They gave you no warrant, no credit, and certainly no monetization. And so taking it to court is your method of making money.
Last but not least is the International Trade Commission, the ITC. They do customs and shipping and importing all day long. And if you’re not so interested in the damages, but you just want to make sure those products stop coming in without your permission, they will do so very quickly. And so it’s a separate tribunal, a separate court system and it can happen all in parallel to a federal case and the PTAB case. The ITC will quickly make sure that those products, if they’re being accused of infringement, are held until that matter is resolved.
So if you have any questions about litigation, enforcing your patent rights as a startup or as a business that really wants to make sure you’ve got your ducks in a row for your technology, give us a call.