Sometimes an inventor finds out that a competitor or someone else in their industry has started making or using a product or process that is very similar to theirs. They may be able to bring a patent infringement action if this happens, but first they should make sure that they have the right to bring a claim. This means that a valid patent covers the invention and that they have legal ownership of it.
Patent rights expire within about 20 years from the date on which the patent application was filed, and they may expire sooner if the patent owner fails to keep up with paying maintenance fees to the U.S. Patent and Trademark Office. These must be paid after three and a half years, seven and a half years, and 11½ years. Moreover, only the owner of the patent can sue for infringement. Many inventors work for companies and assign their rights over their inventions to their employer. In other cases, several inventors collaborate on a single invention and hold joint patent ownership rights. All of the inventors need to bring the patent infringement action together if the patent is jointly held.
The question of whether infringement has occurred involves a very specific analysis of the patent claims. A court in an infringement action will compare each element of a claim to the elements of the defendant’s product or process. Infringement occurs if the elements match or if they are sufficiently equivalent in their function and operation, which is known as the doctrine of equivalents. While a court will make the final decision on whether infringement has occurred, you may want to compare the elements on your own to decide whether it is worthwhile to take legal action.
Formal litigation can prove expensive and time-consuming. There may be more efficient ways to resolve the problem. If you have a reasonably amicable relationship with the apparent infringer, you might want to meet with them informally to explain the situation and see if they are open to a fair resolution. If you do not know the infringer, you can send a demand letter that explains your ownership of the product or process and asks for a meeting with the CEO.
Even if the alleged infringer does not know you, they may be willing to meet and negotiate if your claim has a valid basis. Patent infringement actions are very expensive for defendants as well as plaintiffs, and the defendant likely is preparing to spend substantial resources on manufacturing and marketing a product. Thus, they have an incentive to resolve legal problems before moving forward. A discussion might result in a settlement in which the infringer makes a lump sum payment to the patent owner, who then releases their infringement claims. Or it might result in a long-term agreement for the patent owner to receive royalties or a position at the company.
If you do not know the infringer, and you feel uncomfortable negotiating with them directly, you can ask them to engage in mediation. This will allow both sides to benefit from the insights of a neutral third-party mediator. Mediators can facilitate a compromise by helping each side understand the other side’s position.
If you cannot reach a settlement, whether through direct negotiations or mediation, you may need to proceed with a formal lawsuit. This probably will require hiring a patent attorney. You should make sure to find an attorney who has handled patent infringement cases previously and who is familiar with your industry. Your attorney will file a formal complaint in federal court, explaining how the defendant has infringed on your patent. Together with your attorney, you will need to compile evidence of your ownership of the patent and the infringement. Then, the complaint will be served on the infringer, who will have an opportunity to respond. The case will proceed similarly to other types of civil litigation after that stage.
