Fight your corner

ownership of a patent does not mean your rights are never infringed by others and there may come a time when you have to decide how to deal with what looks like an infringement of those rights.

In an ideal world, your competitors would take notice of your patent, read it, take advice then decide they should make a different product or redesign their proposed product so it does not infringe.

However, it is a competitive world out there and that does not always happen. (It happens in more cases than you might think, but when your competitors act like this, you are unlikely to know about it).

It is important to understand the 'scope' of your patent. While it can be effective to publicise the fact that your complex machine is 'patented', you must understand that the patent may be focused on a single feature, which is only a part of the machine.

Everyone knows patent litigation is expensive but it is expensive on both sides. So the more you can be bullish about your rights and impress on the potential opponent that your patent is strong and you will not hesitate to use the law to support your rights, the better is the chance of a settlement.

So what do you do? First, to deter any infringers from even starting, you should 'talk up' your patent rights. If you become known as a company not afraid of going to court, potential infringers will be deterred.

Sometimes an infringement is innocent, and these are less difficult to deal with. But where the potential infringement is from a competitor with full knowledge of your patent, this party is likely to have taken advice and received encouragement to think he or she can go ahead without infringing.

In the latter case, you must be realistic about the costs of sueing the infringer. It would be prudent to budget a sum of £50,000 to get the case as far as court, and the same again when the court hearing commences. Many cases incur costs well in excess of these figures, so it is not something to be undertaken lightly.

Being realistic about these costs also avoids the damage to your reputation that can arise by starting something you are not able to finish.

Making the first approaches through a big-name solicitor specialising in intellectual property (IP) litigation may cost more initially but is more likely to have a big and effective impact (hopefully bringing the matter to a speedy and favourable conclusion) than making the first approach on a shoestring.

Before taking any overt action, consult your patent lawyer who will be able to interpret your patent in the same way as a judge and assess the strength of your case.

There are two aspects that have to be considered:

does the infringement fall within the scope of the claims in your patent?

what is the likelihood of a successful challenge being made against the validity of your patent?

In a contested action, where one party is sueing the other for infringement, the defendant will usually bring a defence by arguing that the patent is invalid. Your patent could be invalidated if the defendant can show that your invention was not new or was non-inventive at the date you applied for the patent.

If it appears that you have a good enough case and are ready to instruct a solicitor, decide what outcome you would like.

Generally, the possibilities that can be awarded by a court are:

an injunction, or court order, for the defendant to stop infringing;

damages, that is a payment from the defendant to the claimant to compensate them for the lost business suffered because of the infringement;

the confiscation of infringing products.

You will also want to consider whether it would be appropriate to offer the infringer a licence against payment of a royalty.

Offering a licence can take the sting out of an infringement dispute and may allow both parties to continue and for both to make a profit from the business, therefore saving face.

Taking an action to court has significant risks, apart from the direct cost, as the loser will usually be ordered to pay the costs of the successful party, and this can double the financial bill.

Legal fees insurance is a controversial subject and your lawyer is likely to be able to advise you about this. Generally, any such insurance has to be effected before you are aware of any possible claim.



David Copp is managing partner at patent and trademark attorney Dummett Copp