Enforcing your patent without court – Image by Tori Rector CC-2.0
Patent Enforcement Without Court
Once you have filed for your patent application, it is important to plan for using this powerful tool against your competitors. Knockoffs come to market with astonishing speed in the modern global economy, you must be ready with a quick response when they appear. Sometimes non-traditional and creative approaches lead to better results than standard litigation techniques.
Many attorneys, especially litigators, are quick to send “cease and desist letters” to infringers. A cease and desist letter can be a potent weapon if used correctly; however, a patent holder must be very careful, as there are many pitfalls in sending cease and desist letters to infringers. First, a cease and desist letter can expose you to counter-suit for a Declaratory Judgment that your patent is invalid (and other claims), where they can choose the time and the forum of the dispute. Furthermore, sending a cease and desist letter can give the defendant various defenses (called “latches” and “estoppels”) if you don’t bring a lawsuit in a timely manner. Because of these potential pitfalls, you must be very careful in sending any cease and desist letters, unless you are ready to litigate the dispute in court.
Cease and Desist Letters to Middlemen
One alternative approach is to send the cease and desist letters only to “middlemen” such as retailers, catalogs, sales reps, etc. These parties are all liable for the sale of the infringing products, but they don’t have a financial incentive to fight a patent lawsuit. While a manufacturer operating in China might dare you to try to sue them, these middle men definitely do not want the potential liability, and they definitely don’t want to go to court. In many cases you can get them to drop the infringing product, and replace it with your product. In this manner, your patent becomes your best salesman, converting your competitor’s sales into your own best accounts.
Find a White Knight
Another opportunity may lie in forming an alliance with “the enemy of your enemy.” If a large company is trying to roll over you and your patent, you may be able to work out a deal with a “white knight” who is a competitor of that large company. They may want to purchase your company, or at least acquire rights to the patent, and use you as a weapon against their enemy.
If You Can’t Beat Them …
If a patent infringer is not afraid of a lawsuit against them, entice them with an offer to buy the patent for themselves. A large competitor with a powerful legal team may feel confident that they can wear you out in court. But even better than escaping liability themselves, is the potential option of getting an exclusive on the product, and suing the competition for infringement. They may jump at the opportunity to acquire your patent to use against other competitors. If your patent can offer a monopoly on the product, they may be willing to pay for that advantage.
Do Nothing?
If none of these alternatives work, the next best option may be … to do nothing! There are usually no reasons to rush into a lawsuit. Damages will continue to accrue against the infringer for infringing sales. As long as you are careful to avoid taking action that could give rise to defenses (such as mentioned above), you can often wait for years without prejudicing your ability to bring a lawsuit at a later time. As time goes on, increased damages could potentially lure an investor to finance your lawsuit, or convince a patent attorney to bring the suit on contingency.
Publication
If your patent has not yet issued, you might consider requesting that the application be published prior to the standard publication date. Once published, and served on the infringer, it is possible to begin accruing damages against an infringer even before the patent has been granted. Discuss this option with a knowledgeable patent attorney.
Conclusion
Patent holders have many options when determining a patent enforcement strategy. Think creatively, discuss the matter with a knowledgeable patent attorney, and you can find many ways to profit from your patent rights.
