In the United States, patent owners have a legal right to protect their inventions. Unfortunately, upholding these rights can often prove challenging and may lead to significant repercussions for patent holders.
To enforce your patent rights against infringers, you must sue them in civil court. Although this process can be lengthy and expensive, it is essential for safeguarding your intellectual property from infringement.
Steps in enforcing your patent rights against infringers
1. Cease and Desist Letters
If someone is making, using, or selling an invention that infringes upon your patent rights without authorization, legal action may be taken against them. One of the first steps in this process should be sending a cease and desist letter to the offender.
Cease and desist letters can be sent by anyone, but they should only be written with legal language that an experienced attorney would understand. Therefore, it’s recommended that you seek the counsel of a lawyer knowledgeable about intellectual property law before crafting or sending any letter.
When writing a cease and desist letter, it’s essential to use direct, forceful language. Additionally, attach any necessary legal documents so the letter can be properly served according to court regulations.
You should also set a time limit for the infringer to cease engaging in the offending activity. Failure to adhere to this period could result in court orders stopping their actions and paying damages for your losses.
The letter should be concise and direct, with a focus on the intellectual property involved – such as patents, trademarks, or copyright.
It is beneficial to provide some details about the infringing product, so that the infringer can understand why their action is inappropriate and why the action should cease immediately. This information helps the offending party gain clarity and understand why their action must cease immediately.
Your letter can also include a demand for compensation. This is especially beneficial to intellectual property rights owners, as it helps them recoup money that is owed them.
A cease and desist letter is an effective way to get the attention of an infringer before they launch into a costly legal battle. It may also serve as a warning that they could face severe legal repercussions if they continue with their actions, giving you an opportunity to negotiate with them in an effort to avoid litigation.
2. Injunctions
Courts have the power to order defendants to cease and desist from certain actions, as well as issue monetary judgments against them. Injunctions are widely seen as one of the most effective remedies available against patent infringement and breaches.
However, injunctions are not always appropriate in all cases of infringement. Typically, injunctions are only granted when there is a genuine threat of substantial harm to the property owner.
Many courts have created analytical tests to guide the award of injunctive relief. These assessments are based on traditional equitable principles that require consideration of an alleged infringer’s degree of culpability, including whether they were the manufacturer, distributor, or user of the product in question.
Furthermore, these analytical tests examine how the infringement has affected the product itself and whether it could result in an irreversible loss of market share for the plaintiff. They also consider how injunctive relief may impact public interests like health or safety.
This approach can be especially valuable in the case of highly complex products. These items often involve significant investments, sunk costs, and lost opportunities that are difficult to assign monetary damages for.
Therefore, it is essential to demonstrate undue hardship. This can be done by demonstrating that an Equipoise-style balancing of equities would favor the plaintiff and cause disproportionate harm to the infringer. This requires a serious analysis of actual harm, including how much depends on sunk investments as well as potential impacts to factories or businesses.
Courts may even consider an infringer’s bad faith and whether they have demonstrated that they will be unable to comply with an injunction. For example, in a patent infringement suit against eBay, a court found it unlikely the company could continue complying with the order after some period of time had elapsed.
Injunctions can be an effective tool to guarantee that inventors or patent holders receive compensation for the value of their inventions. In certain instances, such as when the patent covers an essential feature of the device, injunctive relief may force licensees to pay higher royalties than they otherwise would have paid had litigation not been threatened. This higher royalty is beneficial to patent holders since it allows them to recoup development costs and secure an adequate return on investment.
3. Licensing
If your invention has a patent, you may want to consider licensing its rights to others. This is an efficient way of safeguarding your intellectual property from infringement. Licensing agreements can save you the expense and hassle of costly litigation.
It is essential to transfer your rights in such a way that preserves your ability to sue alone or with a joinder in another lawsuit. However, doing this requires meticulous negotiation and can be quite tricky.
One of the first questions to assess is whether a license agreement transfers “all substantial rights.” This implies that the patent owner must grant the licensee exclusive rights to practice and sublicense their invention, without needing them joined in court by the patent owner. If not, any lawsuit brought by either party against the other will fail.
Furthermore, the license must grant independent standing to sue for infringement – this is a fundamental principle of intellectual property law.
Once the licensee has all of the legal authority to sue on its own behalf, the patent owner can negotiate the specifics of those litigation rights. This could include selecting which type of suit to file, whether to sue, and who should be sued.
A license must also include an exclusive right to prohibit the licensee from practicing the patented invention in certain areas. This can be limited by the patent owner if they are able to limit their right of exclusion only to related parties and not all industry participants.
Another essential consideration when licensing a patent is its duration. This is essential since patents often cover innovative technology that may become outdated quickly; thus, the license should be long enough to guarantee continued development of the patented technology and its market penetration.
The licensee should also have the capacity to transfer its rights under the agreement, as patents can be invalidated or rendered unenforceable in court after being granted.
To determine if the patent owner has properly transferred these rights, a court will examine the license agreement carefully to see if it meets the requirement that patent ownership must grant all substantial rights to sue on its own behalf. Specifically, they’ll look into such issues as exclusivity, control over litigation decisions, patent term length and field of use, transferability, and damages sharing.
4. Litigation
When someone else uses your patented invention without permission (known as “infringement”), you have the right to file a lawsuit against them in order to enforce your patent rights. Although this can be an extensive and expensive process, filing such suits is essential for safeguarding the invention from further infringement.
A lawsuit can involve a variety of legal tactics, such as demand letters, injunctions, and licensing agreements. It also necessitates key strategic decisions.
If you believe someone or a company is violating your patent, the first step should be sending them a demand letter. This letter warns them that they must cease using your invention or else legal action will be taken against them.
The next step in enforcement is filing a lawsuit against the infringer in federal district court. While this can be an extensive and expensive process, it is essential for protecting your patent; success could result in millions of dollars in monetary damages.
In litigation, a jury is selected to resolve all facts in the case. They are charged with determining if a defendant has committed an act of intellectual property infringement and, if so, how much compensation they owe in damages.
To be successful in a patent infringement suit, your attorneys must demonstrate that the defendant has infringed upon your patent and done so willfully. This may necessitate gathering significant evidence, including expert testimony.
Litigation costs, particularly during the early stages of a case, can be quite high. These include filing fees, depositions, attorney travel expenses, and courtroom costs. Furthermore, hourly rates for lawyers, experts, and other witnesses may also be significant components in cost.
Fortunately, there is an expanding market of companies that specialize in funding litigation costs for inventors and others who must fight infringement claims in court. According to UpCounsel’s recent report, litigation funding is growing rapidly as more entrepreneurs and innovators recognize the value of taking legal action to protect their intellectual property rights and take legal action to stop infringement from taking hold.
