Being accused of patent infringement can be serious and have grave consequences. You could be liable for damages, including lost profits or reasonable royalties, maybe even attorneys’ fees or treble damages. You could even be subject to an injunction. There are, however, a number of defenses to such an accusation.

What Should You Do?

If you are accused of infringing another party’s patent, it is advisable to speak with a patent attorney. The attorney can assist you with determining the types of defenses that may be available, as well as an appropriate response to the party making the accusation.

By informing the patent owner that you have contacted your attorney regarding the allegations, you let the owner know that you are taking the allegations seriously. Often, this will give you more time to determine the best strategy.

How Can a Patent Attorney Help?

• Evaluate the patent owner’s claim of infringement
  A patent attorney can assist by reviewing the letter from the patent owner to determine whether enough specific information has been provided so that you can carefully consider the allegations. For example: Does the letter allege a specific product or products that may be infringing? Does the letter cite a specific patent or patents and specific claims that the accused product is alleged to infringe? It is the patent owner’s job to provide these specifics, without which a response would not be warranted. The attorney can assist with requesting this information from the patent owner.
• Review the patent, prosecution history and claims
  Reviewing the patent, including the patent’s prosecution history and claims, should be handled by a patent attorney. Based on this information, the attorney can determine the scope of the patent and what it actually covers, as well as what the claim language means. It may be that certain statements or amendments that the patent owner made to obtain the patent will limit its scope and coverage. The attorney will also review your product to determine whether the claims actually cover that product.
• Conduct a prior art search
  The patent attorney could search for prior art that may invalidate one or more claims of the patent. If prior art can be found that shows that the claims were not novel or were obvious at the time the patent application was filed, the claims would not be valid and could not be infringed. Such a defense would be particularly helpful if the patent claims do in fact cover the accused product.
• Assist with re-design
  If it is found that a design needs revision, an attorney could assist with a re-design of the product to avoid infringing the patent. If the product is re-designed in such a way as to no longer fall within the scope of the patent claims, it would not infringe the patent.
• Negotiate
  A patent attorney could negotiate directly with the patent owner or its attorney. Perhaps the patent owner would be willing to license the patent for a royalty or a lump sum payment. Or the patent owner may have a product that infringes one of your patents so that a cross-licensing deal can be reached.
• Litigation representation
  You may wish to file a defensive lawsuit—either as an administrative proceeding at the US Patent and Trademark Office to invalidate the patent or as a Declaratory Judgment action in Federal court. And, of course, the patent attorney could represent you in litigation with the patent owner if the patent owner has filed an infringement action against you.

What if you Ignore the Letter?

When you receive an accusation of infringement, if you don’t respond to it, you could be liable for treble damages and attorneys’ fees. The Patent Act provides that damages for patent infringement are calculated as lost profits of the patent owner or a reasonable royalty for the infringing product. If such infringement is determined to be willful, the damages may be tripled. In exceptional cases, a court may award attorneys’ fees to the patent owner.

Retaining an attorney to review the allegations and determine what defenses may be available is strong evidence against allegations of willful infringement.