Patent litigation is the law practice that occurs when patent infringement is happening or suspected. Patent infringement is the unauthorized usage of intellectual property protected by a patent. Under patent litigation, there are several different methods of resolving the infringement. There are license agreements, take down notices, cease and desist letters, and infringement suits. Each method will likely be costly and time consuming for both parties. If infringement is occurring and take down notices and cease and desist letters do not work, patent litigation may be vital to preserving a business’s earnings and market status.
If involved in a case of patent litigation, regular attorneys may able to guide you and represent you through the process. However, patent attorneys are additionally licensed for patents and may be able to offer more comprehensive services and/or more options for resolution.
The Steps in Patent Infringement and Lawsuits
Patent litigation may result from patent infringement. Owning intellectual property (patent, trademark, and copyright) sometimes means others will infringe. Property laws provide legal protection for intellectual property that can be used to enforce ownership. You can read more about infringement in our “What Does Infringement Mean?” article. Because owning a patent does not necessarily protect against infringement, patent owners sometimes have to take measures to ensure their intellectual property is being respected.
First, Consider a Licensing Agreement Instead of a Fight
The ideal solution to an infringement matter is almost always a licensing arrangement. In fact, when the infringer is able to make the patented device well, it can be a boon to both parties. Instead of filing a take down notice and/or cease and desist letter, the patent owner contacts the infringer to work out a licensing deal. The patent owner can do this themselves, however, it is often more efficient and effective for an attorney to help. Regular attorneys can do this, but like with all things related to patents, your best bet may be a patent attorney. Read more about licensing in our article about licensing agreement types.
Valuable Tip: Only patent attorneys (and patent agents) have the extra license to practice with patents before the United States Patent and Trademark Office (USPTO).
Second, Will a Take Down Notice Stop the Infringement
If a licensing agreement is not an option, before filing a litigation lawsuit, some notice to the infringer must occur. This can take the form of a taken down notice and/or a cease and desist letter. A take down notice might be submitted as a first step in an attempt to stop infringement. Although not always the most effective method of stopping infringement, a take down notice can halt or disable access to illegal content being sold or uploaded online without the permission of the intellectual property owner. If a take down notice is not effective in stopping infringement from occurring, a cease an desist letter would be the next step.
Third, Use a Cease and Desist Letter Before Filing a Lawsuit
Cease and desist letters are notices sent from an intellectual property owner (or their attorney) to the infringer telling them to stop making, using, and selling the protected property. The cease and desist letter will also usually inform the infringer that filing an infringement suit will occur if they do not stop making, using, and selling the protected property. While a patent attorney may be the most qualified to write and send a cease and desist letter, regular attorneys (those without the extra license to practice with patents) are less expensive and may be able to help.
If sending a take down notice and/or a cease and desist letter is not effective in stopping the infringement, it may be time to file a patent infringement lawsuit. There are several solutions/tools available that are used to resolve patent lawsuits other than the court room. Importantly, all of these solutions can also be used without filing the lawsuit. It is recommended to seek and use the services of an experienced attorney when filing a patent infringement lawsuit. Infringement suits are notoriously famous for being very expensive, thus there are several means to resolve an open patent infringement lawsuit outside of the court room.
Patent Infringement Lawsuit Resolution Tools
There are several tools used to resolve patent infringement lawsuits. Note that most of these tools can also be used without actually filing the lawsuit. There are four kinds of alternate dispute resolution (ADR) methods and two kinds of patent actions that can be used to resolve a patent infringement issue. The ADR methods are negotiation, mediation, arbitration, and conciliation. Both the two patent actions and the ADR methods can be used without filing a lawsuit. However, arbitration and conciliation are tools used typically after a lawsuit is filed. Read more about the different alternative dispute resolutions.
Negotiation Before or Instead of a Patent Lawsuit
Negotiated settlements are the most common result of patent litigation. Negotiation is a strategic discussion between two parties that attempts to settle a dispute with a resolution where both parties are content with the final decision. This ADR method requires give and take by both parties, which is often difficult to achieve. In comparison to the other methods of resolving patent litigation, negotiation is much less expensive and time consuming. If both parties are open to compromise, negotiation can occur rather quickly.
Mediation Before or Instead of a Patent Lawsuit
Mediation is an another method to resolve a patent infringement issue. Mediation requires an impartial third party, known as a mediator, to assist in the negotiation communication. This neutral third party will facilitate and control the direction of the negotiations between the parties. Mediators cannot provide advice to either party, such as “you should…” or “I think it is best if…” because they are neutrals. Mediation is focused on the solution and how parties can compromise to reach said solution.
Arbitration and Conciliation After Filing a Patent Lawsuit
Arbitration and conciliation are dispute resolution methods that can be implemented without first filing a lawsuit but are generally only used afterwards. Arbitration and conciliation are processes by which a neutral party listens to both sides’ arguments and renders a binding decision both parties must follow.
Patent Actions to Invalidate an Issued Patent
Once a patent is issued, it is considered valid, because the USPTO has approved its patentability. Patentability refers to the combination of the following criteria: patent eligible subject matter, usefulness, novelty, and non-obviousness. To read more about whether or not an invention is patentable, take a look at our article “What Does Patentability Mean?”
There are two tools available through the USPTO to potentially invalidate an issued patent. If the patent was issued less than nine months earlier, it is possible to file an inter partes reexamination. Additionally, anytime during the enforcement period of an issued patent, you can file an ex parte reexamination. In the United States, if a person or another business wishes to challenge the patentability of an already issued patent, they have the right to. Read more about invalidating patents in our questioning patent validity article.
Ex Parte Reexamination to Invalidate an Issued Patent
A ex parte reexamination is a request to the USPTO to reexamine an already issued patent. This method of determining a patent’s validity can be much quicker and easier than other patent litigation processes. Available since 1981, this method of questioning a patent is still available under the America Invents Act (AIA). Ex parte reexamination does not include active participation in a suit by either the filer or the patent owner.
An ex parte reexamination can occur at any point after the patent has been officially issued. The requester is required to provide all proof of invalidity using prior art from publications or previous patents to establish a substantial and new question of patentability. This proof must be dated and available prior to a patent’s effective filing date in order to be considered valid.
Inter Partes Reexamination to Invalidate an Issued Patent
An inter partes reexamination is another form of resolving patent infringement. Inter partes reexamination is similar to ex parte reexamination except that in inter partes reexaminations, the parties have the right to participate in the reexamination process. Like the ex parte reexamination, the requester must provide reasoned proof that one or more claims of the challenged patent are not valid. However, as with the ex parte reexamination, the prior art allowed to be considered during reexamination is limited to prior patents, patent applications, or printed publications.
Although similar, there are some differences between an inter partes reexamination and an ex parte reexamination. One key difference has to do with who facilitates the reexamination of a patent. In an inter partes reexamination, members of the Patent Trials and Appeals Board (PTAB) who work as administrative patent judges reexamine the issued patents. Inter partes reexamination can only be sought within the first 9 months after the issuance of a patent.
Patent Litigation Penalties
The parties involved in patent lawsuits may be issued a penalty. The different kinds of penalties a court can issue depend on many factors. One penalty is actual damages. If a party is ordered to pay for actual damages, the court is referring to the profits lost due to the infringement. Another penalty is royalties for unauthorized use. The use of royalties depends on the remaining time of validity of the patent, the type of product, and other royalty and licensing arrangements. A court may issue a party to pay the legal costs of the other party. These costs can include court filing fees, litigation expenses, and attorney’s fees.