Accused of Patent Infringement? Here’s What to Do

 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.