Before anything else
True on either side
A complaint is one side's allegation. It is not a finding, and companies of every size receive them. A demand letter is not nothing either: it opens a range of outcomes from a license negotiation to litigation, and it starts real obligations, including preserving documents. Most patent disputes end in a negotiated resolution rather than a trial verdict.
Two other things are worth knowing before any decision gets made. The claims at the end of the patent, the numbered sentences, are the property line, and everything else in the document is scenery. And copying is not required for infringement, which means a company can infringe a patent it has never heard of, and a competitor can build something that looks like your product and still sit outside your claims.
You have just been accused
A letter or a complaint arrived and it names your product
The week ahead is about deadlines, documents and not making the position worse while you decide who to hire.
Confirm the real date
In federal court a response to a complaint is generally due twenty-one days after service. That date moves with a waiver of service or an agreed extension, and it is specific to your court and your case, so it needs to be confirmed rather than assumed. If a demand letter arrived instead, there is no court deadline yet, which is worth knowing before anyone reacts to the tone of it.
Four things this week
- Suspend automatic deletion. Routine auto-purging of email, chat and files touching the accused product should stop immediately, including anything on a retention schedule that nobody has looked at in years. Courts treat this seriously, and it is the kind of unforced error that damages a position that was otherwise fine.
- Call your business insurance broker. Some policies cover intellectual property defense, and late notice can forfeit that coverage. Asking costs nothing and takes one phone call.
- Keep the speculation off email. Internal guessing about whether the product infringes is exactly the material the other side will later read out loud. Route the technical questions through counsel.
- Tell the small number of people who need to know. Not the whole company. The people who can preserve documents and the people who can answer how the product works.
What to have in front of you
- The asserted patent numbers, and the patents themselves.
- Everything received so far, with the date each item arrived and how.
- A plain description of how the accused product actually works, written by someone who built it.
- Who built it, when, and where their notes and code live.
- Any earlier contact with the other side, including anything from years ago that nobody thought was important.
Interviewing lawyers
Talk to more than one. Ask each of them these, and listen for whether the answer stays in plain language when you push on it.
- Can you understand our technology at the level it was built, or will you depend on an expert to translate it for you?
- Will you read the patent's full prosecution history yourself?
- How do you create pressure without letting the cost run away?
- What would you decline to spend our money on?
A useful answer to the last one is specific and slightly uncomfortable, because it means giving up work. A lawyer who would spend your money on everything has told you something.
You are deciding whether to act
Something on the market looks like the thing you built
The week ahead is mostly about your own records, because a demand you cannot support is worse than no demand at all.
Read your own file first
The public record of how your patent was granted, called the prosecution history, contains every narrowing your attorneys agreed to in order to get it allowed. Those narrowings are permanent, they are public, and they limit what your claims can now be argued to mean. The other side will read that file within days of hearing from you. Reading it first is the difference between a strong position and a loud one.
Four things this week
- Preserve documents on your side too. The obligation is not only the other side's. Suspend routine deletion around the invention, the development work, the sales and the earlier conversations.
- Decide what you actually want. Payment for what has already happened, a license going forward, or the product off the market are three different objectives with three different paths and three different price tags. Everything after this follows from that choice.
- Say less publicly than you want to. A post, an investor update or a sales conversation about a competitor's infringement can create problems that outlast the dispute.
- Understand what enforcing exposes. A challenger can ask the Patent Trial and Appeal Board whether your patent should have been granted at all. The patent can come back narrower, and in a bad case it may not survive. That is an argument for knowing your record, not for doing nothing.
What to have in front of you
- Your patent numbers, and the full prosecution history for each one.
- What the other product does, described in the same terms your claims use.
- When you first saw it, and how you found out.
- Your own development records, and where the inventors are now.
- What the infringement has actually cost you so far, stated in numbers you can support.
Interviewing lawyers
Talk to more than one. The second question below separates people, because a lawyer who has read your file answers it with words and dates.
- How will you explain this technology to a judge or a jury who has never seen it?
- What in our own prosecution history could be used against us?
- Can you explain what this means for the business in language our board can use?
- What would you decline to spend our money on?
A lawyer who has not read the file will answer the second one in general terms about the process. That answer is not wrong. It is just not about you.
Please read this part carefully
Everything above is general information about how patent disputes usually work. It is not legal advice, and it is not a statement about your situation, which nobody can assess without seeing the documents.
Reading this page does not create an attorney-client relationship. Until one exists in writing, please do not send confidential or sensitive information through this site or by email.
Deadlines are the one thing worth acting on immediately. If a complaint has been served, confirm your actual response date with a lawyer this week rather than relying on the general rule described here.
Attorney advertising. Past results do not guarantee a similar outcome. Legal services are provided through Practus, LLP.
If it would help to talk it through
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