Intellectual Property

A Competitor Is Using My Invention! What Can I Do?

By Brian Farkas, Attorney
How should you react if your invention is infringed?

Inventors depend on their ability to have exclusive control over their inventions. If you invent a device, chemical, or processjust to name a few potential examplesand a market competitor begins using it, your business is likely to suffer. Not only will you have wasted time and money on your research and development, but suddenly another "inventor" will be able to develop a reputation around the innovation that was yours. If you discover that a person or entity is using your invention without permission, what can you do?

Ensuring You Have Patent Protection

Before you can stop someone from using "your" invention, you must make sure that it is actually yours. Patent protection is required in order to sue an infringer.

How can you obtain patent protection over your invention? Patents are conferred by the U.S. Patent and Trademark Office (USPTO), a federal agency. To start, you will need to submit a patent application to the USPTO. That application will ask you to describe your invention, including images, descriptions, and diagrams where appropriate.

A patent examiner will then carefully analyze your invention to ensure that it is properly patentable, and that it does not conflict with already existing inventions. The examiner may deny your application or may come back to you with further questions and requests for clarification. The USPTO offers a guide, which will help you understand the complexities of the patent registration process.

Note that the process for obtaining a patent is overall more complex and lengthier than the process for obtaining trade secret, trademark, or copyright protection (other forms of intellectual property). Trade secrets, for instance, are not registered with any federal agency; they simply come into existence based upon the nature of your business practices. With respect to copyrights, registration is not required (though it does confer many benefits). And with respect to trademarks, businesses will have some local common law protections over their trade names without any federal registration.

Patents, however, are different. Federal registration is required for their protection. So as you consider how to handle infringement of your invention, realize that registration with the USPTO is the first step towards protection.

Sending a Cease-and-Desist Letter to the Patent Infringer

Before rushing into a lawsuit, make every effort to resolve the situation through negotiation and persuasion. If you come to learn that another person or entity is using your invention, you can begin by writing a cease-and-desist letter.

Sometimes called a demand letter, this is simply a formal notification to an infringer of its wrongful conduct and a demand that it be stopped. Specifically, that means the infringer should cease using your patented invention. Cease-and-desist letters should be formal in style and tone. They should be typed, preferably on your company's letterhead, and sent to the infringer by next-day mail (to convey the seriousness of the subject).

Most of the letter should be dedicated to the "facts" of the dispute. For example, you should describe your invention, attach the USPTO-issued patent as an exhibit, and then describe the infringing product or use by the infringer.

Your letter should also reference the fact that the infringer is violating the law. Of course, you are not a lawyer, and should not pretend to be one. However, referencing the legal allegation (that the infringer is violating your rights under the Patent Act, 35 U.S.C. § 1 et seq.) will convey that you are aware of your legal rights and take them seriously.

Finally, your cease-and-desist letter should wind up with a firm deadline for compliance, perhaps ten business days. Define what exactly you mean by compliance: Written acknowledgement that the infringer will stop using your patent? Confirmation that its infringing products won't be sold? Royalty payments to your company? Giving these specifics will make your letter more credible.

Finding a Patent Attorney and Considering Legal Action

Unfortunately, not every infringer will stop its conduct upon receiving a phone call or a cease-and-desist letter. You may need to retain a patent attorney; one who specializes in patent law. This field is highly specialized. It has its own jargon, its own statutes, and its own legal issues. Thus, a real estate lawyer or family lawyer is probably not the right person to handle a conflict over your invention.

Once you identify an attorney, have an initial consultation with him or her. Bring all relevant documents, including a copy of your patent and any information you have about the infringing product. See what solutions the attorney suggests, and whether the attorney's demeanor and approach seems like a match for your needs.

What options might you pursue through your lawyer? An initial step might be to have your attorney call or write to the attorney for the infringing company or individual. Often, an infringer who sees that an attorney is involved will begin to take the matter far more seriously.

Assuming your lawyer's attempts at negotiation do not work, the next step may be litigation. Federal law gives you the right to sue for infringement. (See 35 U.S. Code § 271.)

Your attorney will need to work with you to draft a document known as a complaint, which initiates litigation. It lays out all of your factual allegations and causes of action. Lawsuits over patent infringement must be brought in federal district court (not state court) because the Patent Act is a federal statute. The complaint will be filed with the court and served on the infringer, meaning that the infringer will know about your action.

Often, this alone will prompt a party to consider settlement. But if the infringer does not settle, you will need to proceed with the litigation process, which can sometimes take about two years, depending on the nature of the issue and the court's schedule.

Assuming you "win" the lawsuit, you can be awarded various money damages to compensate for the infringement. You can also obtain a court order to prevent the infringer from engaging in further infringement of the patent.

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