Lawyers and Settlements

Intellectual Property: Patents

Enforcement of Patents

Many conflicts involving patents are settled by negotiation.
The patent owner will often take the initial steps at negotiation when a possible infringement is found. However, it is normally best to consult with a patent lawyer who has experience in patent litigation, so that the infringer knows the patent owner means business. Not doing so risks the infringer ignoring demands as not really being serious.

Failing the settlement of a conflict, suit may be brought.
GET A GOOD LAWYER. Since patents are issued by the Federal Government under Federal law, suit for patent infringement is a federal right and must begin in a federal district court located where the infringer resides or where infringement occurs and the infringer is subject to personal jurisdiction. The objectives are (a) an injunction against further infringement and (b) damages (as from loss of sales or royalties). A litigation attorney, preferably experienced in patents and in the technology involved, will be needed to have reasonable prospects of success. This is VERY expensive and a good solid patent, well drafted is crucial for the patentee. On the defensive side, this is where a wrongly accused infringer can be legally declared not to infringe a patent, and a good patent litigator is important to obtain that finding of non-infringement.

It is also possible for an alleged infringer to initiate legal action to attack a patent without waiting to be sued by the patentee.
After the patent owner has charged someone with infringement, the accused infringer may file what is called a Declaratory Judgment ("DJ") action seeking to have a court say the accused infringer does not infringer. The claims of the patent in dispute are reviewed for possible invalidity and, if not found invalid, a determination is made whether or not the accused infringer is proven not to infringe.

A major infringement or DJ suit is a very involved and expensive proceeding that may take several years.

Pretrial procedures are liberal in allowing the parties to obtain very detailed information from each other. A very high percentage of patent infringement cases are settled. Alternate Dispute Resolution procedures are sometimes useful for patent disputes, as the disputants often want to keep a relationship while settling the patent dispute.

Alternatives to Patent Protection

Some inventions can be commercially exploited while being kept secret.
For example, a product may not reveal a chemical process that is used to make the product. Also, in some instances, agreements for secrecy have been used successfully, as in the protection of computer software. However, outside these possibilities, trade secrets (like all secrets) are difficult to keep. In general, one who learns a trade secret without wrongdoing (as by his own discovery or analysis) is legally free to use the knowledge.

"Disclosure Document"
The Patent and Trademark Office will accept and preserve for a limited time an informal description of an invention known as a "Disclosure Document," which was referred to previously. Such a document can be prepared and filed by an inventor, but it does not provide any significant form of legal protection. It simply provides evidence of the date of conception of the invention disclosed, which can be done as simply in many other ways. The Disclosure Document will be destroyed after two years unless it is referred to in a separate letter in a related patent application within the two years. I strongly advise against use of this program and encourage use instead of provisional patent applications as discussed above.

Trademark and copyright protection
Trademarks and copyrights simply do not cover inventions, as was explained earlier. Ultimately, a trademark (such as KODAK or COCA-COLA) may have immense value that far exceeds any value of any patent, but at the initial stages, when the trademark does not yet have great reputation, a patent provides its owner with a unique package of rights that cannot be duplicated by any other means. Only a utility patent can stop others who have copied the utilitarian (functional) aspects of an invention or have done their work independently of those making, using, or selling the patented invention.


Information on this page was supplied with permission of Bruce E. Burdick.