Patent owners often ask me, how can I stop my competitor from infringing my patent?
First, a word of congratulations: A product must be successful to attract imitation (the sincerest form of praise). Here, the patent owner is proved thrice wise, first, in making a good invention, then in patenting it, and now in seeking redress for the infringement.
In chess, White goes first. In matters of infringement, the first move belongs to the patentee. In both cases, the right to open is an advantage not to be squandered.
Too often the patentee casually moves a piece or two, preferring to engage the infringer before engaging counsel. Trade show conversations and e-mail threats are usually ineffective. There’s a reason for the infringement, which is that the patented product is good. The infringer will not stop lightly.
A chess game is measured in minutes; the term of a patent is fixed at 20 years. Chess players mind the clock, but patent infringement often is tolerated for years.
As in chess, wasted moves and wasted time can prove costly. But what’s done is done. The question becomes, where do we go from here?
After I verify the fact of infringement, we discuss alternatives. The patentee says they’re willing to do anything but litigate. They know that can be expensive.
Great! Let’s take our queen off the chessboard at the beginning of the game! Why? Because we can’t afford to play her, let alone to lose her.
So the patent owner asks if I, the lawyer, can just write a letter to the infringer. Yes, I can. Such a letter can be soft or hard or somewhere in between.
When the infringer has made it clear that they’re not going to stop infringing, a soft letter from a lawyer—“my client is the owner of the ’123 patent, which might be of interest to you”—is unlikely to do much good.
A hard letter—a notice of infringement—-is a legal instrument: “We hereby notify you that your ABC product infringes at least claim 1 of the attached ’123 patent.” This kind of letter starts the clock on damages. It will get the infringer’s attention if not their compliance.
But if adequate as legal notice, such a letter also is sufficient ground for the infringer to file an action for declaratory judgment in their choice of venue. Or they can file a petition to invalidate the patent in the Patent Office. Either of these responses can hurt the patent owner, both financially and tactically.
While time’s a-wastin’, the infringer can seize the advantage.
All of this brings us back to consider timely enforcement of the patent in court.
It doesn’t cost much to draft a Complaint, but there are variations in the proper uses of a Complaint. As in chess, it’s useful to think a few moves ahead if we want to check our adversary’s wrongful conduct.
Coming soon in Beem on Patents: “How’s Your Serve?”