Accused of Patent Infringement? Here’s What to Do
Without the patent holder’s consent, another party making, using, or selling a patented technology in their products constitutes a patent infringement. The owner of the patent has the option to sue the infringer to put an end to their actions and obtain royalties for the unlawful usage. Since federal law regulates intellectual property, the patent holder must file a lawsuit against the illegal party in federal district court.
It may be dangerous and have serious repercussions to be accused of patent(s) infringement. You may be responsible for paying damages, such as lost earnings or fair royalties, as well as possible legal fees or triple damages. Even an injunction might be used against you. There are, however, several responses to such a charge.
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The person who files a lawsuit with a court is referred to as a plaintiff, also known as a claimant or complainant. When a plaintiff successfully pursues a legal remedy, the court will grant judgement in their favour and issue the proper orders, such as a judgement for damages.
Any person or party who is obligated to respond to a plaintiff’s complaint in a civil action before a court, or any party who has been formally charged or accused of breaking the infringement law, is referred to as a defendant.
Repercussions of Patent Infringement
If the infringement is actually convicted, the court could opt to issue a permanent injunction, often known as a post-trial injunction. A perpetual injunction forces the offender to entirely cease all of their activity. Almost usually, if the infringement is found guilty, the court issues a permanent injunction. Interim injunctions are granted where there is a strong case and/or the balance of convenience favours the plaintiff. However, permanent injunctions are given after the conclusion of the trial.
When accused party is found guilty of violating the Patent infringement law, the court will typically order them to pay damages. These expenses might consist of fair royalties, real damages, or both. The earnings that the patent owners lost to the infringement are the real damages. The characteristics of the items and the duration of the patent have a greater impact on royalties.
The offender frequently has to pay expenses in patent infringement lawsuits. These expenses cover everything from filing and court fees to the patent holder's attorney fees. These expenses are typically high.
What an Accused Party can Do?
Consult a Patent Attorney:
When the accused party comes to know that their product is infringing another party’s patent on same product features through a cease-and-desist letter, it is advisable to consult a patent attorney. Even if you have an internal engineering or scientific team or a patent infringement counsel, it is doubtful that they will be knowledgeable with the specifics of patent laws. A patent attorney can evaluate the case and provide some advice on how to proceed further. The attorney will help you to decide on the potential forms of defences and how to respond to the patent holder party.
What Step can be Taken by Patent Attorney?
The non-infringement defence is based on the idea that even if your patent is legitimate, the allegedly infringing product or method does not correspond to the claimed innovation. Claim establishes the extent of the innovation or the exclusivity of the inventor’s right according to contemporary patent infringement rules. The preamble of a patent claim and a list of restrictions that describe the invention, are typically the two main components for infringing the patent.
As a result, for a product or method to be considered an infringement, it must meet all of the claimed invention’s features, either exactly or in accordance with the theory of equivalents, in order to be included within the patent claim’s purview.
As a patent is a legal document, you can consult to a patent attorney or an IP specialist to ascertain the claim’s scope. You can evade the claim if your product is still in its development to avoid infringement. Patent infringement can be prevented if it is judged that the product is not within the invention’s purview.
In case the attorney gets to know that you (as accused party) are marketing a patented product that was purchased from the third party. In this case the attorney will use first sale doctrine or first sale rule which states that “once an authorized sale of a patented article occurs, the exclusive rights of the patent holder’s to control the use and sale of that article are said to be exhausted and the purchaser is free to use or resell that article without further restraint from patent law.
As an alternative to arguing that a specific patent claim is unpatentable because it does not meet the criteria for patentability, the accused may assert as a defence that the patent owner engaged in unfair practises during the prosecution of the patent application, which will render the entire patent unenforceable. Inequitable behaviour is defended by arguing: The patent holder deliberately misleads the examiner, the patent holder concealed knowledge of crucial facts so there can be no infringement because the patent is invalid, or Some sort of honesty guideline was breached.
If it turns out that a product’s design requires alteration, the attorney could help with few changes in design/feature of the product to prevent violating the patent. It wouldn’t violate the patent if the product underwent a redesign such that it will be no longer corresponds to the claims of the patent.
The consulted patent attorney may look for pre-existing arts that can be patent(s) or a non-patent literature(s) that might render one or more patent claims invalid. The claims would not be legitimate and could not be violated if prior art(s) prove that the claims of patent were not innovative or evident at the time the patent application was submitted. To find these kinds of prior art(s), the attorney may consult his internal searching team or IPR consulting companies to conduct a search that is called invalidation search. Thus, invalidation search is a golden goose to defend the accused patent infringement.
A patent attorney might conduct negotiations with the patent owner or its patent attorney directly. Maybe the patent holder would agree to licence the invention in exchange for a royalty or a one-time payment or the patent holder could have a product that infringes on one of your patents, allowing for the possibility of a cross-licensing agreement.
You could choose to file a defence lawsuit, either as a Declaratory Judgment action in Federal Court or as an administrative process at the US Patent and Trademark Office to invalidate the patent. Additionally, if the patent owner has brought an infringement claim against you, the patent attorney will undoubtedly represent you in the court.
What If The Cease-and-Desist Letter is Ignored?
A patent owner who suspects someone or anything of violating their intellectual property (IP) will send them a letter of patent infringement, also known as a cease-and-desist letter. Ignoring these letters and continuing actions that are subsequently determined to be infringing may lead to increased damages that can ruin enterprises. According to the Patent Infringement Act, a fair royalty for the infringing product or the patent owner’s lost earnings is used to determine damages for patent infringement. Damages might be quadrupled if it is found that the infringement was done deliberately.
One of the best ways to refute claims of intentional infringement is to get IP counsel/attorney to evaluate the claims and ascertain any potential defences.
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