What To Do if You Think Someone is Infringing Your Patent

You think someone is infringing your patent, but you aren’t sure what to do next. Here’s a five-step process.

If I think someone is infringing my patent, what should I do?

Patent owners do far better when a litigation strategy is based on sound, up-front analysis. Such a careful analysis can result in avoidance of an ill-advised, expensive lawsuit. To develop an intelligent strategy, the following analysis is essential.

Step One. Study the patent and prosecution history (i.e., history of communications with the USPTO) to understand the meaning of the claim limitations.

Step Two. Assess the strength of the case for infringement by comparing the elements of the suspected product or process to the properly-construed limitations set forth in the patent claims.

Step Three. Assess available defenses, such as invalidity of the patent. To do this, you must review the patent, its prosecution history, and the relevant “prior art,” referring to patents, articles, or other publications predating the patent’s priority date.

Step Four. Estimate any potential damages based on the magnitude of infringing sales and the type and extent of injury, such as lost profits or a reasonable royalty. Take into account the competitive value of an injunction barring future sales of the infringing product. Also consider the intangible effects that a lawsuit may produce, which can be both positive (e.g., the value of sending a message to others who may be considering entering the market by infringing the patent) and negative (e.g., the risk that the accused infringer will file counterclaims based on infringement of its own patents, antitrust violations, or other possible grounds).

Step Five. Finally, obtain intelligence about the infringer, including its resources, its past litigation practices (if any), the possibility of a counterclaim, and the relative costs and benefits (to both parties) of litigation.

 Whom can I sue for infringement of my patent?

A patent conveys the right to prevent others from making, using, selling, offering for sale, or importing inventions covered by the patent in (or into) the US (including its territories). Therefore, a company infringes if it makes goods in the US that are covered by a patent, even if the goods are only sold and used overseas.

Similarly, a company that uses an infringing article in the US is an infringer, even if the product was bought or leased from a third party and even if the product was made abroad.

Finally, a company that sells in the US a product that was made abroad by a process patented in the US may be an infringer of that patented process. The result is a variety of potential litigation targets including the manufacturer, any distributor, any retailer, any company that purchases and uses a patented product—even an individual who uses a patented item.

In addition, a party can be held responsible for acts of infringement by others. In that case, the infringer can be charged with “indirect” infringement, which comes in two forms: “inducement to infringe” and “contributory infringement.” One “induces” infringement by committing acts intended to cause someone else to infringe. For example, one could “induce” infringement by providing materials and instructions to consumers that cause them to infringe a patent.

One “contributes” to infringement by selling goods or services whose only substantial use is an infringement. For example, one can be held liable for selling chemicals that have no practical use other than in an infringing process. On the other hand, an accused infringer would not be held liable for contributory infringement for selling a chemical that can be used in either an infringing or noninfringing manner, even if the accused infringer knows the chemical will be used by a particular customer in an infringing way.

However, if the accused infringer specifically helps in the use of the chemical in an infringing way, such as by providing instructions, it may still be liable for “inducing” infringement.

A variety of concerns impact the selection of whom (if anyone) to sue. There are questions of legal strategy, such as the effect the choice has on where the suit may be brought, or on the types of damages available. Where there are multiple infringers, a smaller company is sometimes chosen in the hope of a quick or easy initial victory to build a war chest and establish a pattern of success. Other business concerns also impact the choice of infringers; for example, many companies feel it is unwise to sue existing or potential customers.

 Should I contact someone I think is infringing my patent?

If you believe someone is infringing your patent, the natural instinct is to contact them. The least expensive way to resolve a dispute may be to persuade the infringer to either stop infringing or pay for a license.

Giving notice can sometimes be important, particularly if the patent owner sells goods that are covered by a patent but not marked with the patent number. In that case, the patent owner may not be able to recover damages for infringement until actual notice is provided.

Contacting a potential infringer, however, involves some risk. An accused infringer can use a letter charging infringement as a basis for filing a “declaratory judgment” action, sometimes referred to as a “DJ” action. In a DJ suit, the plaintiff (potential infringer) seeks a declaration that the patent is invalid or not infringed. Not only does this begin a potentially expensive litigation process, but the suit will almost certainly be filed in a location more favorable to the accused infringer. In addition, if contact is made but there is substantial delay in following up, as the patent owner, you can lose certain important rights should you later try to assert the patent against the alleged infringer.

Before choosing how to respond, it is advisable to consult experienced patent litigation counsel.

Interested in learning more? Visit our litigation page.