Did you know if someone starts infringing your patent it could actually be a good thing? Hi, I’m JD Houvener, owner and founder here at Bold Patents Law Firm. We’re going to go through today why getting an infringement on your patent can actually be a really good positive thing. Now also, we’re going to talk about those steps to take to enforce your patent rights.
So let’s take it at first notice. Let’s say you’ve got your patent granted. Congratulations! And hopefully you have a child or two patents that are still pending to build your portfolio and you’ve identified an infringer. Right? This is sort of that moment you freak out about, you worry about them—people ripping you off or someone trying to undercut you and go to market on your well-earned right, your turf that you’ve developed with earning your patent rights.
So what do you do? Alright, take a deep breath. This can be emotional for most inventors, especially those that we work with. This is part of the core technology that frames the whole basis of their business and so it’s understandable you can be emotional when you see one of your competitors or even a foreign adversary start coming into the market with the exact same product as yours.
So first thing you have to do is be rational. Okay, get with your patent attorney. Let’s hope you have one. If you filed your own patent and got a patent on your own, hey, kudos to you. But this is the time to go seek counsel before taking actions on your own.
What a patent attorney will do is they’ll evaluate and look at the infringing or potentially infringing actor – product, device, software – whatever it is and confirm that they are actually infringing on your patent. What most inventors, especially those that haven’t yet got a patent, don’t necessarily appreciate is what patent claims are. So understanding what a patent claim is is vital. Okay?
So a utility patent will have a numbered set of claims in written words. Those claims each have elements, which means basically sentences that describe and claim particular elements in structure or methods or steps or processes that would make up what you actually own. And we have to do, at the end, if you were to prove an infringement before court, in federal court for sure, you have to provide evidence and be definitive that every single element—part of that claim—is shown in the infringing article or the infringing method or processor system.
So having an attorney give you an opinion—it’s called an infringement opinion—on your potential infringer is the first step.
Second step, even if there is infringement and there’s enough there, your patent attorney says yeah this does look like an infringement, you want to make sure you shore up your own validity, meaning the patent you have. One of the first things that they’ll do if you were to send, let’s say, a cease and desist letter against your infringer, if they’re a sizable company, one of the first things that they’ll try to do is invalidate your patent before even arguing “Hey, we’re not infringing.” They’re going to try to invalidate your patent at the Patent Trial Appeal Board.
So having a patent attorney on your team that will evaluate both infringement and validity is key. Many patents are issued, let’s say, in 2010 to 2013-14, especially software patents, need to be looked at under a microscope. Those software patents may be drawn to what’s called an abstract idea. And that is an issue, right? If that were to go to the Patent Trial Appeal Board and it was then—the laws changed in 2014 with this major landmark Supreme Court decision, for example Alice for CLS Bank—where everyday things that are happening that are just simply being claimed to be done on the internet are not going to be valid because it isn’t providing any additional substantive or technological advancement. Merely just putting it online is not going to be sufficient.
So some of those patents that have been issued, it’ll be 10 and 15 years old now, are not going to be valid. And so a company will be able to invalidate those patents before even arguing that they’re not infringing. So infringement: looking at both infringement as well as validity—validity, that’s the other piece that most people don’t think about.
Alright, so let’s talk about, you know, when you’re going to go to take action. Now oftentimes, and my first thing I said in this in this little video here is that it can actually be a good thing if an infringer is a company and let’s say they’ve actually started selling products and that’s how you saw them. Maybe they’re selling online on their own website or even through a third party channel such as Amazon and you found an infringer. That doesn’t always mean you should send them an aggressive cease and desist letter.
You might first take a little more tactful approach and reach out to them business owner to business owner and say, you know what, looks like you might be infringing. Maybe there’s a way that we can work together, right? Because this infringer—they’ve worked hard, they’ve developed the product, found a manufacturer, designed the product, and advertised it, and is selling it on the free market. That’s a lot of energy, right? A lot of investment of their own time and energy to bring your product to market. Maybe they would be open to sharing profits with you. And so what would be included in that is you licensing the ability to make use and sell your invention to that infringer. And now you can simply make a royalty on every single unit sold. And now you can maybe even stop the development process or work with them to bring more to market if they found out a way to sell—leverage that—and use it as a benefit to you.
Don’t necessarily think in terms of adversarial. Right? This can be a win-win situation.
Let’s go on the other side where, yes, it looks like they have not been willing to talk. If they’re not willing to share information or negotiate a licensing deal, it is time to go to enforcement.
So the two major tribunals are federal court or the ITC, International Trade Commission. So ITC is where they will actually stop a product from importing into the US and that will happen very quickly.
The second option is federal court which can take a lot longer but does come with a bonus of seeking damages. Okay? So without damages, if you’re only seeking to, you know, basically stop the product from entering, you’re not interested in getting any damages, ITC is a much quicker solution. You can pursue both but federal court will be more expensive, obviously, coming with litigation fees, discovery costs, as well as all the court docs and filing. And you’ll need to hire a patent litigator.
Full Patterns, for example, is a patent prosecutor. So we help with the acquisition, right? The getting of rock solid world-class patents. We do not handle patent litigation which is a very separate area of law. Patent litigation requires those that want to be in court, right? Conduct jury trials which might entail discovery, evidence laws, specific federal court rules and statutes that require timelines and evidence and witnesses. That’s a whole separate area of law different than the prosecution which is much more technical, as you inventors know, that involves a lot of diagrams and drawings and even working out proofs of concept and design iteration. That’s the life of the prosecutor.
So working, looking and finding for a litigation attorney is important. And you should always see two or three and find the best one that suits you and you and your company’s needs.
Alright, so that is kind of the nutshell on patent infringement. Highlight of this: I want to make sure you understood is that it can actually be a good thing. Okay? So finding an infringer, spotting one, having that freak out moment just wants you to breathe, take a breather for sure. Contact a patent attorney, work with someone like Bold Patents who can help you do some infringement analysis, validity analysis before you go jump to litigation.
I’m JD Houvener. It’s been a pleasure talking with you. Have a great rest of your day. Go big, go bold!