By UpCounsel Patent Attorney Gloria Steinberg

Patent infringement matters can be daunting and overwhelming – whether you’re on the defensive or the offensive side. Here is a general breakdown of each stage of the patent infringement process to help you navigate the complexities of patent infringement.

Stage 1: Obtaining and Enforcing Your Patent

Of course, as the name implies, there can be no patent infringement without a valid patent. This means that a patent owner would need to hold a valid patent that is registered with the United States Patent and Trademark Office (USPTO) in order to claim infringement. A pending patent application is not enforceable, so patent applicants cannot make a patent infringement claim. However, if a pending patent application is published, a patent owner may seek provisional damages provided that the owner puts an infringer on notice. Additionally, note that patents are country-specific, so U.S. patents will be enforceable only in the U.S.

Stage 2: Cease and Desist Letter

For many patent owners, the first step in enforcing a patent is sending a cease and desist letter to an alleged infringer. The primary purpose of a cease and desist letter is to put the alleged infringer on notice of the patent in question. It can be used to later claim “willful infringement.” Usually, cease and desist letters identify the owner of the patent in question, provide information about the patent itself, explain how the alleged infringer’s product is infringing the patent and outline the demands of the patent owner. Cease and desist letters also have a response by date by which the alleged infringer should respond.

I highly caution against ignoring cease and desist letters, in part because there may be valid claims that are important to address. If you are not sure whether there are valid claims, it is just as important to find out. Additionally, many cease and desist letters offer opportunities for settlement outside of court. If there are valid patent infringement claims, reviewing settlement options can be a crucial step for infringers.

Stage 3: Infringement Analysis

I generally require clients to conduct an infringement analysis before sending and after receiving a cease and desist letter. Infringement analysis allows both patent owners and alleged infringers to do due diligence and make sure that there is a valid claim for patent infringement. This way, all parties involved in a patent infringement process can make an informed decision as to how to proceed when there is a suspected infringement.

To do an infringement analysis, I would highly recommend seeking assistance from a patent attorney. Under the patent law, the claims of the potentially infringed patent must be read onto the accused product. When every element of the claims of the patent in question is found in the accused product, there is literal infringement, as in Pennwalt Corp. v. Durand-Wayland, Inc. If even a single element is missing from the product, the accused product is non-infringing to that claim.

If a literal infringement is not found, infringement may still occur under the “doctrine of equivalents,” as in Warner-Jenkinson Co. v. Hilton Davis Chem Co. The doctrine of equivalents is only applied in very limited circumstances. A product may infringe under the doctrine of equivalents if it performs substantially the same overall function, in substantially the same way, to produce substantially the same overall result as the claimed invention. Under the doctrine of equivalents, however, the patent owner is limited from recapturing patent scope that was surrendered by the amendment.

Stage 4: Settlement Options

If there is valid patent infringement, parties generally enter into a licensing agreement to settle out of court. A licensing agreement gives a licensee permission to use, make, and/or sell a licensor’s patented product or technology. The term of the licensing agreement can be for the full lifetime of the patent, which can be 20 years from the date of its application filing, so it is important to consider whether you would like to be bound by the contract for such an extended period of time. Additionally, licensing agreements can oblige licensees to pay royalty and perform other responsibilities. For this reason, it is important to weigh the pros and cons of entering into a licensing agreement for you and your business.

Stage 5: Patent Infringement Lawsuit

Patent infringement litigation is one of the most expensive cases to get through a trial for both plaintiffs and defendants. There are very few law firms that take on patent litigation lawsuits on a contingency basis, and even then, many of these firms require parties to cover litigation expenses, including research, court reporters, depositions, filing fees and witnesses. Patent infringement litigation is also very time-consuming. On average, time to trial takes two to three years. For these reasons, most cases settle out of court. However, a patent infringement lawsuit can be necessary if parties cannot reach an agreement.

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About the author

Gloria Steinberg

Gloria Steinberg

Gloria is a results-driven patent attorney with a diverse background and passion for intellectual property law. She has extensive experience in handling patent applications relating to software, hardware, biotech, and consumer products. Gloria is seasoned in patent prosecution and can seamlessly take on applications at any point in the application process. Gloria has also handled numerous trademark and copyright matters. She regularly files trademark applications and successfully manages litigation for infringement claims.

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