Patent Assertion: Everything You Need to Know
Patent assertion takes place when a patent owner believes that another party has infringed on his patent and he makes a declaration of the infringement.3 min read updated on February 01, 2023
Updated November 24, 2020:
Patent assertion takes place when a patent owner believes that another party has infringed on his patent and he makes a declaration of the infringement.
What Is Patent Assertion?
Even though patents are granted by the United States Patent and Trademark Office (USPTO), they are not enforced by that office. If you own a patent, it is your responsibility to make sure that no one infringes on that patent. If you find an issue of infringement, you must assert or declare that it has happened and take legal action in order to right the wrong.
A patent owner's goal in patent assertion is to be paid for the use of their invention. Patent assertion doesn't demand the full hammer of the justice system or send anyone to jail; it simply requires appropriate attribution and payment for the use of someone else's intellectual property (IP).
If an individual or company wishes to legally use or somehow benefit from a patented invention, they must acquire a patent license. This way, the patent owner is paid for the use of their invention throughout the duration of the use.
If a patent owner forces an infringer to enter into a patent license agreement in order to rectify the infringement, it is called stick licensing.
Taking Patent Assertion to Court
Criminal cases require the prosecution to prove guilt, but civil cases require the plaintiff to prove guilt. This is called the burden of proof.
The burden of proof in an infringement case under patent law lies with the patent owner. Once the issue is taken to court, the party asserting the patent must be able to prove that the accused party actually infringed on the patent.
In order to prove infringement, someone asserting a patent will likely bring experts into court to act as witnesses to the fact that the infringer would have had to violate the patent in order to create or market whatever he did.
How Patent Assertion Can Payoff
If a patent owner can successfully prove that his patent was violated, it can be very beneficial. This will take a lot of work and effort, but being rightfully paid for your IP is an important matter.
When an infringer is found guilty, they are forced to pay for a licensing to use the patent and pay for any use that took place before they were caught. This can come in the form of a large settlement, sometimes as much as $100,000.
There are a handful of cases where patent assertion led to settlements of millions of dollars.
Common Patent Assertion Settlements
Settlements for patent assertion are usually quite uneventful. If the violation is proven, the infringer is forced to become licensed for use of the patent and they settle for an amount of money that appropriately covers their past and future use.
Under a patent license agreement, the licensed party can pay the patent owner two different ways:
- Each year for their profits made through the use of the patent
- Once per quarter for profits made through the use of the patent
The licensee will be required to pay the patent owner royalties throughout the lifetime of the patent. Larger companies will sometimes pay the patent owner a larger sum of money at one time instead of keeping up with regular payments. This amount is determined by estimating how much the company will profit from the use of the patent and taking a percentage of that number depending on the determined royalty rate.
How to Handle Multiple Patent Infringers
In some cases, a patent owner will find that more than one individual or company is infringing on his patent. This can make the process of patent assertion more complicated, but if the owner can prove the infringement, it will be well worth his while.
Such cases can lead to multiple settlements.
What to Watch Out for With Patent Assertions
There are a few things to keep in mind when deciding whether or not to go through with patent assertion. First, you'll want to be careful to get the help of a patent attorney before entering into discussions with those you believe have committed infringement.
Patent assertion can also cost quite a bit of money, so a patent owner will need to make sure he is prepared for the costs.
If you need help with patent assertion, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.