IP ASSERTION

Asserting patent rights in the United States is a multi-step process that often involves legal action to enforce a patent holder’s rights against potential infringers. Here is a detailed description of how patent rights can be asserted:

• Ensure Active Patent Status: Before taking any steps to assert patent rights, patent holders should ensure that their patent is active and not expired. This involves checking that all required maintenance fees have been paid and that the patent hasn’t reached the end of its statutory term.
• Patent Monitoring and Detection: Patent holders often monitor the market for potential infringement. This might involve watching competitors, surveying products and technologies in relevant industries, or setting up alerts in databases to notify of potentially infringing patents or products.
• Infringement Analysis: Once a potential infringer is identified, a thorough infringement analysis is typically conducted. This involves comparing the claims of the patent to the potentially infringing product or process to determine if there’s an infringement. Often, patent attorneys or experts are consulted for this analysis.
• Cease and Desist Letter: If it appears there’s infringement, the patent holder (or their attorney) may send a cease and desist letter to the alleged infringer. This letter informs the recipient of the patent rights and demands that the infringing activity stop. It can also serve as a basis for initiating settlement discussions.
• Negotiation and Licensing: Many patent disputes are resolved out of court. The patent holder might negotiate with the alleged infringer to come to a licensing agreement, where the infringer pays the patent holder for the right to use the patented technology.
• Filing a Lawsuit: If negotiations fail or if the patent holder chooses to bypass negotiations, they can file a lawsuit in a federal district court. Patent infringement is a federal matter, so state courts do not have jurisdiction over these cases.
• Discovery and Litigation: After filing the lawsuit, both parties enter the discovery phase, gathering evidence and taking depositions. The court may also hold a “Markman hearing” to interpret and define relevant patent claim terms, which can significantly influence the outcome of the case.
• Damages and Remedies: If the court determines that infringement has occurred, the patent holder may be entitled to remedies, which can include:
• Injunction: A court order preventing the infringer from continuing the infringing activity.
• Damages: Monetary compensation for losses suffered by the patent holder. Damages can be based on lost profits or a reasonable royalty rate. In certain cases where infringement is found to be willful, the court may award enhanced damages, potentially up to three times the actual damages.
• Appeal: Either party can appeal the district court’s decision to the U.S. Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent appeals.
• Enforcing the Judgment: If the patent holder prevails and is awarded damages, they may need to take additional steps to enforce the judgment and collect the awarded damages, especially if the infringer is not cooperative.
• Post-Grant Proceedings: Separately, alleged infringers can challenge the validity of the patent at the USPTO through post-grant proceedings like inter partes review (IPR), post-grant review (PGR), or covered business method (CBM) review. These are administrative trials where the USPTO re-examines the patent’s validity.

Asserting patent rights can be complex, time-consuming, and costly. Patent holders should carefully assess the merits of their claim, potential damages, and costs involved before deciding on the appropriate course of action. Consulting with experienced patent attorneys is crucial throughout this process. Learn more.