My Patent Has Been Infringed: Do I Need an Attorney?

Do you need a patent attorney?

By , Attorney

Imagine that you invented a product, expecting to license it and profit from the royalty stream. You worked hard crafting the invention, from concept to execution, and spent countless hours perfecting its design. Then you learn that someone else has brought an invention and to market that's suspiciously similar to yours. You have reason to believe that this third party stole your invention. Do you have a case for patent infringement, and if so, should you hire an attorney?

Do You Have an Enforceable Patent?

Before starting a fight with the "infringer," you must determine whether you actually have an enforceable patent right over the invention. If not, then no "infringer" exists.

First, you must ensure that you are the legal inventor of the patent for the invention. You may, for instance, have given up your legal rights over the patent if you invented it in the context of employment. For example, if you worked for a drug company and created a new type of medicine, your employment agreement with the company likely assigned rights to that invention to it. This would mean that you could not enforce an infringement claim against a third party that is stealing "your" invention.

Second, you must make sure that your patent has not expired. It must be valid under the statute (typically 20 years from the date of filing the patent application with the United States Patent and Trademark Office). And you need to have paid all necessary maintenance fees to keep the patent alive.

Assuming the patent is yours and that it is up to date, the next question is whether or not you have a valid patent over the specific element of the invention being infringed, known as the relevant "claims" of the patent. Claims are terse statements of the scope of the invention, and most patents contain more than one of them. The elements of each claim must be compared with the elements of the accused infringer's invention, usually a device or process.

If the elements of a patent claim match the elements of the device or process, an infringement may have occurred. Even if the claims do not literally match the elements of the infringing device, it is possible that a court would find an infringement by applying what's known as the "doctrine of equivalents"; that is, the patented invention and the allegedly infringing device or process are sufficiently equivalent in what they do and how they do it to warrant a finding of infringement.

Steps to Consider Before Hiring a Lawyer

In some situations, you may be able to resolve the dispute without hiring an expensive patent attorney. Attorneys are expensive, and sometimes hiring one can send a message that you are gearing up for battle rather than being open to collaboration and compromise.

Your initial step might depend on your relationship with the infringer. Is it a former colleague or friend, or an unknown third-party company? If a colleague or friend, you might begin by meeting to discuss the situation over coffee, approaching the person in a calm (but firm) manner and explaining your role in creating the invention at issue.

If the suspected infringer is an unknown third-party company, you might need to take a more formal approach in the first instance. For example, you might send a demand letter to the company's CEO, outlining your ownership over the invention and requesting an in-person meeting.

Why would a competitor agree to sit down with you, rather than throwing your letter in the trash? A competitor who is concerned that your claim has some veracity might worry about the potential for litigation, particularly if on the brink of spending significant amounts of money on manufacturing or marketing. Most companies would prefer to mitigate that legal risk before incurring those expenses. For that reason, the company may be willing to offer you some sort of settlement.

Typically, the settlement would be a lump sum of money, in exchange for your signing a waiver and release of any claims you might have against the company. (This assumes, of course, that your infringement claim actually has some verifiable merit and that the company perceives a real risk, rather than just an idle threat.)

You may seek to negotiate a broader deal, for example asking for a percentage of revenue or a consulting position. Again, your ability to negotiate will depend on the company's perception of its risk, as well as its perception of your potential value.

In some situations, you might also consider suggesting mediation. A mediator is a third-party neutral who works with disputing parties to enhance mutual understanding and negotiate compromise. Sometimes, mediation can be a more effective strategy than your negotiating directly with the alleged infringer.

Deciding to Hire a Patent Lawyer

Unfortunately, negotiation and mediation cannot solve every dispute. In some situations, you may need to hire an attorney to advocate on your behalf.

Remember, you should not hire just any attorney. Patent law is a very specific and technical area of law, and you will have most success if you find a lawyer who is fully familiar with patent litigation. (The general practitioner who handled your home closing or drafted your will might not be the right person for this task.) As you meet with potential lawyers, ask them about their experience representing inventors such as yourself. You can ask for references, so that you can speak directly with clients.

Once hired, the attorney would initiate the lawsuit by drafting and filing a formal complaint. Patent litigation is brought in federal rather than state court. The complaint would set forth your factual and legal allegations. You will need to assist your attorney with gathering relevant documentation, including emails, photographs, or other proof of your involvement in the invention. The filing of the complaint and service on the alleged infringer (the defendant) will formally initiate the lawsuit.

If you would like to speak with a patent lawyer, see Nolo's Lawyer Directory. You will find profiles of local patent lawyers complete with pricing, practice philosophy, experience, and more.

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