How to Enforce Your U.S. Patent Rights: Steps to Take Against Infringement

A U.S. patent grants its owner the exclusive right to make, use, sell, or license their invention for a set period—typically 20 years from the filing date for utility patents. However, unauthorized use of patented technology, known as patent infringement, can undermine this exclusivity. Enforcing a patent is a critical step in protecting your intellectual property (IP) rights and ensuring fair market competition. Below, we outline the essential steps a U.S. patent owner should take when dealing with patent infringement.

Step 1: Identify and Confirm Infringement

Before taking legal action, the patent owner must determine whether infringement has occurred. This requires a thorough analysis of the accused product or process and a comparison with the patent claims.

Key Actions:

• Conduct a claim analysis by comparing the infringing product or process against the patent’s claims.
• Perform a prior art review to ensure that the infringing party is not using an alternative, non-infringing approach.
• Consider hiring a patent attorney or a technical expert to assist in the analysis.
• Determine whether the infringement is literal (directly matching the patent claims) or through the doctrine of equivalents (performing substantially the same function in substantially the same way to achieve the same result).

Step 2: Gather Evidence and Document Infringement

Once infringement is identified, it is crucial to gather and document evidence to support your claim.

Key Actions:

• Purchase and examine the infringing product.
• Record how the product functions through photographs, videos, or engineering analysis.
• Collect marketing materials that show how the infringing party promotes the product or process.
• Obtain expert opinions to strengthen your claim.
• Keep a detailed log of any interactions with the infringer.

Step 3: Consider Business and Legal Strategy

Enforcing a patent can be costly and time-consuming. Weigh the costs and benefits of various enforcement strategies before proceeding.

Key Considerations:

• Market impact – How is the infringement affecting your business and revenues?
• Litigation costs – Are you financially prepared for a prolonged legal battle?
• Potential for settlement – Would a licensing agreement be more beneficial than litigation?
• Competitor analysis – Is the infringing party a major competitor or a small business that might not have the resources to pay damages?

Step 4: Send a Cease-and-Desist Letter

Before initiating litigation, many patent owners start with a cease-and-desist letter. This formal letter notifies the infringer of their violation and requests them to stop using the patented invention.

Key Components of the Letter:

• Identification of the patent number and details of the infringement.
• A demand to stop using, selling, or distributing the infringing product.
• A request for a response within a specific timeframe.
• The possibility of resolving the issue through licensing or other negotiations.

Sending a cease-and-desist letter can lead to multiple outcomes:

1. The infringer complies and ceases the infringing activity.
2. The infringer responds and negotiates (e.g., requests a license or argues that they are not infringing).
3. The infringer ignores or contests the claim, which may require further legal action.

Step 5: Engage in Negotiation or Alternative Dispute Resolution (ADR)

If the infringer responds to the cease-and-desist letter, negotiation can be a cost-effective way to resolve the dispute. The patent owner may choose to grant a license to the infringer in exchange for royalty payments.

Alternative Dispute Resolution (ADR) Methods:

• Mediation – A neutral third party helps both sides reach a mutually beneficial agreement.
• Arbitration – A binding decision is made by an arbitrator, which can be less expensive than litigation.

Step 6: File a Lawsuit in Federal Court

If negotiations fail, the patent owner can file a lawsuit in U.S. federal court, as patent disputes fall under federal jurisdiction.

Key Steps in Patent Litigation:

1. File a complaint in a federal district court where the infringer operates.
2. The infringer files a response, which may include a counterclaim challenging the patent’s validity.
3. Discovery phase – Both parties gather and exchange evidence.
4. Pretrial motions and hearings – Courts may dismiss weak claims or rule on procedural matters.
5. Trial – The court (or jury) determines infringement and possible damages.
6. Appeal – If either party disagrees with the ruling, they may appeal to the Court of Appeals for the Federal Circuit.

Step 7: Seek Remedies and Damages

If successful in litigation, a patent owner may receive various forms of relief, including:

• Injunctions – A court order stopping the infringer from further use of the patent.
• Compensatory damages – Lost profits or reasonable royalties for unauthorized use.
• Enhanced damages – Up to three times the damages if the infringement was willful.
• Attorney’s fees – In exceptional cases, the court may order the infringer to cover legal costs.

Step 8: Enforce the Court’s Decision

Winning a lawsuit does not automatically mean compliance. If the infringer continues unauthorized use, the patent owner must take further legal steps, such as requesting the court to hold the infringer in contempt.

Key Enforcement Actions:

• Request a court-ordered seizure of infringing products.
• Monitor the market for continued infringement.
• Engage law enforcement if necessary.

Step 9: Consider ITC Proceedings for Import Bans

If the infringing product is imported into the U.S., a patent owner can file a complaint with the U.S. International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930. The ITC can issue an exclusion order, preventing infringing goods from entering the U.S.

Benefits of ITC Proceedings:

• Faster resolution compared to federal litigation.
• Stronger enforcement mechanisms at U.S. ports.

Step 10: Monitor and Continue Patent Protection

Patent enforcement is an ongoing process. To prevent future infringement, patent owners should:

• Regularly monitor the market for new infringers.
• Expand their patent portfolio to strengthen protection.
• Review licensing opportunities to maximize the patent’s value.

The Bottomline…

Enforcing a patent is a strategic decision that requires careful analysis, negotiation, and, if necessary, litigation. Whether through settlement, federal court, or ITC action, patent owners have multiple options to protect their intellectual property rights. By staying vigilant and proactive, they can safeguard their innovations and maintain their competitive edge in the market.