Just when you’re starting to make some big wins in selling your new product to the market, life can throw you a curve-ball. Out of the blue you receive a letter alleging your business activities are infringing on a patent that you have never heard of, by somebody you have never met. You understand the needs of your business and have been reinvesting profits for growth. Spare capital is limited and a blow like this could easily put you out of business. What do you do?
For many, patent law is not exactly the most interesting subject in the world. However, if you find yourself in the above predicament, suddenly patent law matters. A lot.
The first thing I would recommend is finding and retaining legal representation that has good experience with patent cases. The nuances of patent law are far too much for you to get up to speed and successfully defend yourself and your integrity while still dedicating the crucial attention your business needs to survive.
Patents and patent law are designed to promote innovation and allow inventors to protect their inventions so they can capitalize on them. Unfortunately, there is a growing problem where some abuse the system by securing junk patents and assert them in a carpet bomb of lawsuits against various businesses. This practice is colloquially known as “patent trolling” and is a significant problem that remains to be solved.
You should know that depending on the circumstances, and the level of sophistication of the product at issue, the road ahead may be a long one, with many critical decision points. This article will give you a rough birds-eye view of what you will need to do.
When it comes to a patent case, there are generally two main defenses that you can make.
- Non-infringement (i.e. you are not infringing nor are you causing others to infringe)
- Invalidity (i.e. the patent is not valid and is therefore unenforceable)
At the present juncture, it may be encouraging to know that it is not uncommon for patents lose some or all of their claims when properly challenged. For a variety of complex reasons, invalid patents are sometimes granted by the USPTO. Unfortunately, that doesn’t necessarily mean that it’s going to be easy to defend yourself. Let’s take a brief look at the trade-offs between these two defensive strategies, particularly in a scenario where you are confident that the case brought against you lacks merit.
NON-INFRINGEMENT
The simplest and most straightforward defense you can make is that of non-infringement. You can think of a patent as a piece of property on an intellectual plane. In this way, infringing on a patent is akin to trespassing on somebody’s land.
For a physical piece of land, it is commonly very easy to determine the moment you would cross a property line. However, this is not always the case for intellectual property. By its very nature, intellectual property is more difficult to define than the bounds of a physical plot of land. To add complexity to this, patents are sometimes deliberately written using flexible and vague language.
Nevertheless, if you can show non-infringement, you are free to continue selling your product and the patentee gets to keep their patent. In this case, it is important to know that the patentee may still be able to file for a new patent, based on the previous patent, with new claims more specifically aimed at your products. This is the residual risk of fighting a patent case based on non-infringement. When the grounds brought against you are meritless, It is much like being accosted by a perpetrator with a knife, dodging the blows, but leaving the perpetrator with knife in hand which they can sharpen and come after you again.
INVALIDITY
Though proving invalidity takes more work. If you can show a patent is invalid, not only have you exonerated yourself from the accusation of infringement, you have also removed the legal weapon from the perpetrator’s hands.
Invalidity may be shown in a wide variety of ways but predominantly it may be thought of as showing the patent is either defectively written or is not inventive, either because somebody else did what they’re claiming first, or because their alleged invention is so obvious that no inventive action or thought was required to produce it.
If invalidity is shown, the patentee is stripped of their rights to enforce the invalidated patent. In case of dealing with a patent troll, this is not only good for you, but also anybody else that the patent troll might have their sights on. Depending on the circumstances, they may theoretically be able to file for a new application and get a new patent to come after you again. However, not only would that typically take years, but by invalidating that patent, you have shown that you are a force to be contended with. And they may want to think twice about going after you again.
Invalidating junk patents asserted by patent trolls is currently the most effective solution to growing patent troll problem. If enough people put up a fight, patent trolling could become unprofitable and greatly diminish in prevalence, or hopefully go extinct.
In the longer term, the best solution to the patent trolling issue is for the patent office to do a more thorough job at vetting patent applications and making sure that non-inventive patents aren’t issued in the first place. When the patent office allows a junk patent to issue, businesses and consumers end up having to foot the bill for their mistakes.
If you are in a situation where you need to defend yourself against a patent troll, and if you need some mechanical expert witness work, get in touch with us here at Alpine Engineering and Design. We have the experience to know what types of arguments will help you put patent trolls in their place and get you back to focusing on the health of your business. Give us a call today!