Nothing puts a damper on a morning What you do next will have a huge impact “Whatever you do,” he says, “don’t panic.” Smart Business spoke to Anderson about I just received that letter — what do I do With the broad subject matter available Should we tell them their charges are No — if only for the reason that you may Your lawyers, particularly attorneys experienced in both intellectual property and litigation matters, can help you determine Typically, attorneys will first draft a letter What information will my lawyer want to Your attorneys will review the asserted What if there is a chance they are correct? There are several different ways you can You mean their patent might not be valid in Sometimes, the Patent Office issues a What is the best way to cover my company to While it seldom is possible to be sure that MATTHEW S. ANDERSON is a shareholder at Munck Carter, P.C., where he practices in the Intellectual Property section. His practice
quite like the threat of a lawsuit. Your
executive team discovers that another
on your success in defending against those
allegations, says Matthew S. Anderson,
shareholder at the Dallas law firm of Munck
Carter, P.C.
the appropriate steps to take at the threat of
patent litigation.
now?
for patent protection, any company is
potentially vulnerable to infringement accusations for products it sells, services it provides, even its internal business practices. A
company can even be accused of infringement for the way it uses a product purchased from someone else. A letter suggesting you may ‘practice a patented invention’ doesn’t even mean you’ve intentionally done something wrong — just that you
should carefully examine your practices
and potential liability.
unfounded, ridiculous?
not immediately know what the asserted
patent covers and how it relates to your
business practices or products. If you’ve
been informed of a potential infringement,
approach responding as seriously and
methodically as you would any significant
legal transaction. You certainly don’t want
to go on the record with the patent owner
or his legal counsel without consulting your
legal team first.
your potential exposure from legal, monetary and business perspectives. A thorough
analysis can help you determine if you
infringed at all, what the potential monetary
damages are and how hard you should
defend the accusation. Your attorneys also
can help determine when the best solution
for you is a business deal with the other
side, rather than a legal fight.
to send in reply. It basically says, ‘We’ve
received your letter, we’re taking it seriously, and we will investigate.’
have?
patent to determine what devices or
processes are covered, then sit down with
various people in your company to get an
initial view of whether there’s an actual
infringement problem. Depending on the
nature of the patent, the attorneys may
need to interview management, salespeople, engineers or others. Attorneys will
work to determine what other liabilities or
indemnifications you may have, depending
on your relationships with customers and
upstream vendors affected by the patent.
respond. If the potential financial exposure
is small, you may simply wish to settle the
matter and move on. You can negotiate to
license the patent and let the patent owner’s
enforcement activities help you keep your
place in the market. You may wish to vigorously defend the accusation or challenge
the validity of the other party’s patent in the
courts or in the United States Patent and
Trademark Office.
the first place?
patent it shouldn’t. When that happens, the
patent can be declared invalid. If you’ve
been threatened with an infringement lawsuit, you may want to sue the other side
first, to have the courts declare that either
the patent is invalid or you don’t infringe.
By taking the matter to the courts first, you
generally can choose where the lawsuit will
be tried. As an alternative, your attorneys
can ask the Patent Office to reexamine the
patent, an option that may be less expensive than trial.
assure this never happens?
nothing you do will ever infringe a patent,
should you become aware of a patent that
potentially covers your business or products, a patent attorney can help you avoid
or reduce legal exposure by providing a
professional legal opinion as to noninfringement, or can help you ‘design around’
patents that you are aware of so that you
don’t infringe. If you hear of patents that are
being asserted in your industry or against
your customers or competitors, it may be
prudent to have your attorneys examine
your potential exposure before the patent
owner approaches you.
focuses on patent procurement, enforcement and defense, and identifying, protecting and exploiting intellectual property. Reach him at
[email protected].
