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What To Do if You Receive a Patent Infringement Notice - Part 2

Insight June 06, 2011

In Part I, I outlined actions (1) – (5) that can be taken by a business after receiving such a patent infringement notice.

Eventually, you will likely need to form an internal team and an external team.  This might prove to be the most important action. 

The internal team should start forming immediately after receiving a patent infringement notice.

The team should include one or more individuals with the right technical backgrounds (sufficient to understand your product or service and the asserted patented technology) and one or more business people to help with any business or market issue related to the matter. These individuals will need to be at least partly dedicated to resolving the matter. The internal resources for resolving a patent dispute are often underestimated and underappreciated.  A good technical lead can often develop technical defenses, drive design around initiatives, assist any litigation team and be a fantastic expert at trial.  I’ve worked on patent litigations where in-house technical teams played a critical role in the final outcomes.

The external team will depend on your company’s resources.  If you have in-house patent counsel, that individual should be involved in the actions (1)-(5) in Part 1.  If not, you should retain a patent attorney.  

If litigation is a possibility, you should also seek to retain litigation counsel.  Depending on the circumstances, I recommend a “patent resource” (in house counsel or external) independent from litigation counsel for a variety of reasons.  Primarily, it’s best to have litigation counsel focused on prevailing on any court proceeding, with the other patent resource supporting that effort and also evaluating any alternative paths and providing independent advice. 

If you believe litigation is a possibility, you can also start retaining experts who could testify on your company’s behalf.   However, it’s recommended you do this with your attorney’s advice and counsel.

Finally, always consider the end game.  As mentioned, it’s a business and emotions shouldn’t play a part in the outcome.  Patent litigation is very expensive and risky for both sides.  If a settlement is a possibility (e.g., agreeing to pay a royalty based on sales or modify or cease selling the accused product or service), it should always be evaluated, properly considered and strategically negotiated.  There have been accused infringers who’ve asserted “I’ll bury you in court” or “It will be years before this is resolved so go ahead and sue me”, only to be later humbled with a painful court outcome.   If there’s a reasonable settlement offered, always consider it carefully as an alternate to a costly litigation and possibly an even greater costly outcome.

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