Patent Owners & Litigation

As a patent owner, you should consider the following factors before entering into an infringement litigation:-

Check for any weakness and shortcoming in the patent awarded to you, which would render the patent invalid. The defendant is likely to frame an attack which you may not have anticipated; the attack could have a legal basis or a technical basis or both. Therefore, it is worth spending money either in the beginning at the time of filling the patent application or before entering the litigation. Checking of validity of a patent means to determine

	whether the invention was patentable in the first place,
	whether the invention has been clearly disclosed for it to be performed by a person skilled in the art,
	whether the scope of the patent is wider than what is possible through the disclosed invention and
	whether the patent has been granted to the right owner. There may be other grounds which your attorney may identify.

Estimate costs of litigation which would include legal fees, costs towards documentation, travel, lost time of employee(s) involved in litigation, time of management and other contingent expenses. Legal costs may be very high, especially in foreign countries. It is reported that large patent cases in the western countries may involve a legal cost of about Rs. 2 crore or more. If you happen to lose, you may have to reimburse the legal expenses incurred by the opponent. If you find legal costs are going to be very high, an out of court settlement can also be thought of.

Estimate benefits of winning the infringement case in terms of increased profits due to increased sales, royalty which you may seek from the alleged infringer, advantage of being the market leader and so on.

You may have to show all your documents related to the patent, including the secret ones to the infringer. Disadvantages of this action should be suitably assessed from a long term consideration. Do not forget that the infringer may remain your future competitor. On the plus side, you also have a chance for examining all the related documents of your opponent. As a company, evolve a policy about retention of documents to avoid such situations.

Try to collect all possible information about the infringer, infringer’s activities, marketing policies, sales records, its R&D team, background of R&D personnel, product or process beig utilised and so on. Find out if an ex-employee(s) of yours has joined the R&D / marketing team of the infringer. It may be beneficial in long run to maintain a dossier of the employees leaving you and joining other organisations.

Select your litigation team properly and include technical experts in that. Lawyers with past background of handling patent cases should be a preferred choice. You may like to include more than one lawyer on the team for a strategic advantage.

Anticipate likely defences to be used by your opponent. Defences could be of two kinds:
accused infringer effectively say ‘I did not do it’
accused infringer attacks the patent that is being used against him.

Do not delay in filing suit if you have decided to do so. Do whatever is possible to get a relief against the infringement as quickly as possible. You may seek interim relief if the case is extended. The reasons are obvious, you secure your market position at an early date.