You have identified an infringement, gathered evidence in the proper manner. The 'friendly or forceful letter'with the request to cease the infringing activity, has not had the desired effect. Then it is time to serve a summons on the infringer. You do this in order to commence preliminary relief proceedings or substantive proceedings. When should you opt for which proceedings?
|Preliminary relief proceedings
Irrespective of whether you opt for preliminary relief proceedings or substantive proceedings, it is vitally important to prepare properly when taking action against an infringement. So here are a couple of tips:
1. The summons has to be rock solid.
Take your time to draw up the summons properly. Why?
In principle an infringement only exists if the product contains all features that have been claimed in the patent's independent claims (often claim 1). So if the other party's machine or product contains a part that is not mentioned in the independent claim, in principle there is no infringement and you will lose the case.
The other party stands to make off with the profits if your patent was wrongly granted, for example if:
- The invention was not novel at the time of the patent application.
- There is a problem with the replicability.
- The invention is not inventive.
This is why the invention needs to be presented in the summons in a clear and convincing manner, preferably in such a way that the invention gets the court’s support.
It is very important to ensure that the summons does not contain any weaknesses. ‘One rotten egg spoils the omelette.’ Weak arguments, incorrect statements and suchlike must be avoided at all cost.
2. Make sure you engage the right solicitor.
You need to look for someone who is specialised in Patent law. It should be noted that Intellectual Property law covers a wider area of expertise: such as Trademark law and Copyright law. Not all solicitors who are good in these areas of expertise are also good in patent law.
Some solicitors are also better at defending the patent holder. Others excel in attacking the patent holder.
So make sure you ask people in your network or your patent attorney if they could recommend someone who could represent you in an infringement case.
3. Make sure your expectations are realistic.
Discuss your chances with your solicitor and patent attorney. Are your chances of winning realistic? This is important as you will have to pay the other party's costs if you lose. You should ask some probing questions if you hear: 'this is a challenging case' because this might mean the solicitor is of the opinion that you could very well lose the case.
4. Prepare a settlement strategy
Even before you submit your summons, you should have a well thought-out settlement strategy. Only a small proportion of infringement cases ultimately end up in court, and of those cases a large proportion are settled during the court case and do not culminate in a decision.
An infringement case often involves a huge business risk for the infringer because he will have to cease his activities if he loses. For the patent holder the risks are often slightly smaller because, if he loses the case, this often means the status quo will be maintained, i.e. that the existing infringement is allowed to continue. In other words the business risks are often spread unfairly.
As a patent holder you can benefit from this. Even if you have a relatively small chance of winning, it could still be wise to commence proceedings. Not in order to get a decision in the case, but in order to reach a favourable negotiating result during the course of the case. Everything becomes fluid under pressure. Often a good solicitor can also achieve a great deal in this type of game.
I believe that in infringement cases it often pays to commence proceedings and send a summons. The summons is a knife you let shine in the sun to drive fear into the opponent. It does not always have to lead to a court decision, but the best settlements are often reached under pressure.