Donald J. Ersler, S.C.

What To Do If a Patent is Infringed

"An informed inventor is our best client."

First, hire a patent attorney who is familiar with your product to determine if the accused product reads on the claims of your patent. The patent attorney should review the file history of your patent to determine if the accused product is within the scope or breadth of the patent claims.

The next step is counting the cost. Do you have the money to out last a big opponent? What amount of money can you budget a month to pay the litigation costs? Litigation costs not only include the attorney bills, but the cost of expert witnesses, court reporters, and sometimes travel expenses.

If you can budget the money which is usually in the tens of thousands of dollars and quite possibly more; you must also find out if there are any bones in your patent's closet. There are numerous defenses to a patent infringement suit, such as:

1. Prior art withheld from the patent office.
2. The patent wasn't the invention of the inventors listed on the patent.
3. The invention was publicly disclosed or on sale more than one year before the patent application was filed.

If there are no bones in the patent's closet, that's great. It may also be possible for the defendant to find a piece of prior art which will invalidate your patent. Fortunately, this is a rare occurrence.

If you file a patent lawsuit, be prepared to wait a long time for the adjudication of your case. This is especially true in a jurisdiction where there is a large backlog of cases.

Consider a settlement by the defendant. Sometimes, your case may not be as strong as you would like it. You could end up with a jury who is not sophisticated or has some prejudice against your company. A settlement in hand is better than a larger speculative one. You may also consider taking a royalty or working out some kind of manufacturing agreement with the defendant. Injunctions against the defendant may not always be the best solution.

With the exception of licensing and contract disputes, patent matters are handled by the federal court system. This is very helpful for the litigating parties; you don't have to hire a local patent attorney to handle your case. If you don't like the patent attorneys in your city or they're just too expensive, you can go elsewhere. The out-of-state attorney can hire one of the firms in your city as "local counsel" to file any legal papers. If you are being sued out-of-state you may hire a patent attorney in your city. Your patent attorney will then hire a "local counsel" to file papers in the other city.