You come across a product that looks suspiciously like your patented invention at an exhibition, in a shop or online. Because you have a patent to protect your Intellectual Property you are able to call the infringer to account.
How do you go about calling someone to account for a patent infringement?
Buy the product and compare it to yours
Make sure you get your hands on the suspect product and contact your patent attorney. He will compare the features of the product with the claims contained in your patent.
Which elements are protected and which are not?
An infringement occurs when the product has all of the features that have also been claimed by the patent. However, there is also a grey area. If the competitor has replaced the screws (as stated in the patent) with nails, then he is not literally applying what has been laid down in your patent. Nevertheless, this is not allowed because the difference in the design is too small. This is referred to as an 'equivalent infringement'.
What to do in case of an infringement
If an (equivalent) infringement has been established, you can take the following actions, either one by one or simultaneously.
Contact the infringer
Send the infringing party a registered letter in which you point out your Intellectual Property rights. You can do this via your patent attorney or a lawyer.
In practice most competitors know each other. Depending on the relationship it is either going to be a friendly or a strongly worded letter. However, the key message is always the same:
- We have established that your product falls within the scope of protection of patent X.
- We therefore want to ask you to cease your infringing activities forthwith - or - what makes you think you can bring this product onto the market?
When giving notice of infringement it is important to send the letter by registered post so that you can prove that the party in question received it. This can be important when it comes to determining the damages payable should the incident lead to legal proceedings.
Send a cease and desist declaration
Sending the infringer a letter accompanied by a cease and desist declaration is a way for you to demand that they cease the infringing activities. By signing the cease and desist declaration the infringer promises to permanently cease their infringing activities.
On top of that you can ask for:
- A list of their suppliers
- The number of products sold and in stock
- The retail price
- Profit made
The cease and desist declaration generally contains a penalty clause. If the opponent re-enters the market with the infringing product, they will have to pay you a penalty.
The cease and desist declaration is generally drawn up by a lawyer or patent attorney.
If you are unable to reach agreement with the other party, you can opt to send them a summons. By doing so you are taking the other party to court. A summons increases the pressure and often leads to the negotiations - which are needed to reach agreement - taking place after all.
It takes time, effort and money to take the matter to court. However, the courts in fact only decide on a small percentage of all infringement cases. In the majority of cases a settlement is reached before things get that far. The infringing party will take the goods off the market, a licence agreement is concluded, or a mutual exchange of licences takes places. The infringer may pay damages if you have suffered a financial loss.
Arbitration is an alternative option to going to court. It is often used if the two parties still want to work together in the future.
If you notify a party of a patent infringement and this proves to be incorrect, or if you know or could have suspected that your patent was not valid, you may end up paying for this if the alleged infringer suffers damage as a result. So be careful when waving your patent under people’s noses because you might find yourself on the receiving end....