Can a Business Raise a Claim of Patent Infringement? Understanding the Process and Success Rate at the USPTO

Introduction

In today’s highly competitive business environment, intellectual property (IP) is one of the most valuable assets a company can possess. Among the different forms of IP protection, patents are particularly important for businesses that rely on innovation to stay ahead. However, when another party unlawfully uses a patented invention, the patent holder may need to take legal action by raising a claim of patent infringement. This blog will explore whether a business can raise such a claim, the process involved, and the likelihood of success with the United States Patent and Trademark Office (USPTO).

What Constitutes Patent Infringement?

Patent infringement occurs when a third party uses, makes, sells, or distributes a patented invention without the patent holder’s authorization. The infringement can be:

1. Direct Infringement – When an entity produces or uses a patented invention without permission.
2. Indirect Infringement – When an entity encourages or facilitates another party to infringe a patent.
3. Contributory Infringement – When a party supplies a component specifically designed to be used in an infringing manner.

For a successful claim, the patent holder must prove that the accused party has infringed on one or more claims of the patent.

Can a Business Raise a Claim of Patent Infringement?

Yes, a business that owns a valid patent can raise a claim of infringement against another entity. The primary methods include:

1. Filing a Lawsuit in Federal Court

The most common route for enforcing patent rights is through litigation in a U.S. District Court. Patent cases are federal matters, meaning they fall under the jurisdiction of the federal court system rather than state courts. The business must prove infringement by demonstrating that the defendant’s product, service, or method falls within the claims of the patent.

2. Filing a Complaint with the International Trade Commission (ITC)

If the infringement involves imported goods, the patent holder can file a complaint with the United States International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930. The ITC can issue exclusion orders preventing the infringing products from being imported into the U.S.

3. Sending a Cease-and-Desist Letter

Before taking legal action, businesses often send a cease-and-desist letter to notify the alleged infringer of the violation and demand that they stop using the patented technology. This can sometimes lead to an out-of-court settlement.

4. Alternative Dispute Resolution (ADR)

Some businesses opt for mediation or arbitration as a means to resolve patent disputes without resorting to costly litigation.

The Role of the USPTO in Patent Infringement Claims

The USPTO does not resolve infringement disputes. Instead, its role is primarily in:

1. Granting and Maintaining Patents – The USPTO reviews patent applications and issues patents to inventors.
2. Patent Reexamination and Review Proceedings – The USPTO can reevaluate the validity of a patent through procedures such as inter partes review (IPR) or post-grant review (PGR) to determine whether the patent should have been granted in the first place.
3. Patent Trial and Appeal Board (PTAB) Proceedings – The PTAB handles disputes concerning patent validity, particularly when a third party challenges the validity of a granted patent.

Since the USPTO does not directly handle infringement cases, businesses must pursue infringement claims through federal courts or the ITC.

Likelihood of Success in a Patent Infringement Case

The success of a patent infringement claim depends on several factors:

1. Validity of the Patent

• If the accused infringer can prove that the patent is invalid due to prior art or errors in the original application, the infringement claim may fail.
• Businesses should ensure their patent is properly granted and withstands challenges.

2. Clear Evidence of Infringement

• The patent holder must demonstrate that the accused product or process falls within the specific claims of the patent.
• Expert witnesses, technical analysis, and claim construction are crucial in proving infringement.

3. Defenses Raised by the Accused Party

• The defendant may argue non-infringement, claiming that their product does not perform all the required elements of the patent claim.
• They may also assert that the patent is invalid, expired, or unenforceable due to misconduct by the patent holder.

4. Judicial Interpretation of the Patent Claims

• Courts use claim construction (also known as the Markman hearing) to interpret the scope and meaning of the patent claims before deciding on infringement.
• If the court interprets the claims narrowly, it may weaken the infringement case.

5. Damages and Remedies

If the patent holder successfully proves infringement, they may be entitled to:

• Monetary Damages – Compensation for lost profits and reasonable royalties.
• Injunctions – A court order preventing the infringing party from continuing to use the patented invention.
• Enhanced Damages – If the infringement is found to be willful, the court may award up to three times the actual damages.

Key Challenges in Raising a Patent Infringement Claim

1. High Costs of Litigation

Patent litigation is expensive, often costing millions of dollars in attorney fees, expert witness fees, and court expenses.

2. Lengthy Legal Process

Patent infringement lawsuits can take years to resolve, making it a time-consuming battle for businesses.

3. Risk of Counterclaims

The accused party may file counterclaims against the patent holder, including challenges to the patent’s validity.

4. Difficulty in Proving Infringement

Patent holders must provide strong technical evidence, which can be complex and require expert analysis.

How Do You Rise to the Challenge?

While businesses can raise claims of patent infringement, they must pursue them through federal courts or the ITC, as the USPTO does not handle infringement disputes. The success of a claim depends on the strength of the patent, clear evidence of infringement, judicial interpretation, and defenses raised by the accused party. Given the complexity and cost of litigation, businesses should weigh their options carefully and consider alternative resolutions such as licensing agreements or settlements. Ensuring robust patent protection from the outset can significantly improve the chances of success in enforcing patent rights.