The unfortunate reality is that, in many categories of invention, it can be very difficult to market a product that does not infringe upon an existing utility or design patent.
If you believe that you are at risk of being hit with an infringement claim, it’s critical that you obtain the services of an experienced patent attorney immediately. We can help. To learn more, contact us by calling (916) 760-8265, or sending us a message using our contact form.
Based upon my experience, there are five popular approaches to avoiding getting hit with a patent infringement claim:
5. Throw caution to the wind and knowingly infringe on the patent, and hope you don’t get caught.
As a patent lawyer, I would never recommend this. However, this is an approach that I see a lot. Quite often, patent holders don’t have the resources to enforce a patent, know that their patent won’t hold up in court, or simply don’t know their work is being infringed upon.
Obviously, this is a gamble that hinges upon whether not having to spend a single dollar on taking a legitimate approach is worth the risk of being hit with a patent suit. Again, I wouldn’t recommend it, but it works quite often.
Bear in mind, the more popular your product, the more worthwhile it becomes for a patent holder to come after you.
4. Take out a patent infringement policy.
A few insurers sell patent infringement insurance. These policies can be used to help pay the court costs of defending a patent against infringers, or to respond to claims of infringement. This approach is actually quite similar to the above approach of simply potentially infringing and hoping for the best, except that you defray the cost of potential infringement by paying someone else to take on some of your risk.
Bear in mind, if you know you are infringing and don’t disclose this when you purchase the policy, your insurer will not cover your court costs.
3. Buy your components from American sources.
If you source your product’s parts from no-name overseas sources, you are responsible for any and all patent infringement, even if the infringement is due entirely to a single component you didn’t manufacture, but simply used to build your product.
However, when you buy a product in the United States from the patent holder or a person having a license from the patent holder—whether it’s a paperclip, a computer processor, or a tractor—you purchase along with it a license to all of the patents covering that product and related processes. This means that you cannot be sued for infringement, due to the doctrine of “patent exhaustion.”
The flip side of this is that if you buy a product from an American seller and it turns out they didn’t obtain the necessary licenses—and thus, place you in a position where you are committing infringement—you can sue them under the Uniform Commercial Code. In practice, reputable merchants quickly remove their customers from patent lawsuits and you will be out of the action as fast as you were thrust into it. Of course, if they’re a cut-rate supplier that disappears into the night the moment the lawyers come calling, you’re out of luck. So, be sure to buy from reputable sellers.
2. Identify the patents in question, and then work around them.
Patents are much like pieces of property, in that they have boundaries. If you can stay outside the bounds of the patent/property, you’re in business. Bear in mind, this is a very delicate process, and misunderstanding even a single critical word or phrase can mean failing to avoid the bounds of the patent and ending up in court.
It’s strongly advised that you work with a patent lawyer to identify all the relevant patents and develop a strategy for safely making it through the minefield. Bear in mind, just because you work with a lawyer doesn’t mean you won’t get sued. Rather, it means that you’ll have a cogent response if they do.
1. Obtain a portfolio of patents and other intellectual property rights.
If you pay attention at all to tech or medical industry news, you likely see a constant barrage of minor news stories about the big tech giants and pharmaceutical manufacturers buying up company after company. Almost always, the purchasers aren’t interested in most their acquisitions’ assets—real estate, factories, customer base, etc. What they really want is the portfolio of intellectual property rights owned by the acquisition.
For many decades, it has been a time-honored tradition for companies to squabble over the carcasses of ailing and deceased companies, fighting to lay hands on the lucrative patent portfolios that come up for grabs. These portfolios can be used to go on the attack against competitors by identifying infringement, or to protect against infringement claims, or even to negotiate ceasefires when two companies infringe against one another.
This is a very advanced approach, but it is one of the strongest. The very best way to prevent someone from successfully suing you for infringement is to pull the rug out from under their feet and show that your product relies on a patent or patents that you have obtained, which actually precede (and thus negate) the other party’s patent(s).
Many of our clients do not rely on any single approach, but instead use a comprehensive strategy involving these and other strategies. If you would like assistance developing a strategy to protect against claims of patent infringement, the Law Office of Michael O’Brien can help. For more information, contact us today by calling (916) 760-8265, or send us a message using our contact form.