Preparing to sue a person for infringing your patent? Do you know that if you are not careful in preparing for your suit, you could end up being ordered to pay the attorney fees of the defendant? Assessment these actions and consult an attorney for guidance in relation to your particular details. No legal advice supplied and no attorney-client relationship created in this publication.
(1) Identify your small business goals
Are you searching for revenue (lost profits, reasonable royalty)? An injunction (court order stopping infringer from infringing). Do you want to send a message to your competitors? Do you want to negotiate a license? What can you accomplish ahead of litigation that you can't do after litigation begins?
(2) Get Analysis of Infringement Issues and Invalidity Issues
Need to be in writing. Determine strengths and weaknesses of your patent. Will need to use independent law firm (not 1 taking case) for unbiased assessment. Does defendant have patents on the item? What are the weaknesses and strengths of those patents?
(3) Figure out competitive position of invention
Can defendant quickly design around (or redesign) your patent? What are commercial benefits of the invention? (sales, cost of manufacture, potential for future sales). What are the goods/services that compete with the invention? Does the invention make cash "by itself"? Or is the invention even more productive due to marketing, lever from company position, etc.?
(4) Compare Goods
If practicing the invention, are you losing or gaining industry share? Do buyers like your product/service? How does your product compare with other merchandise in marketplace? How does your product compare with defendant's item?
(five) Damages
Calculate damages. Merchandise marked with patent number? What are your lost profits? What is a reasonable royalty? Insurance coverage? Advertising injury?
(6) Litigation Costs
Estimate legal fees, fees, experts. Travel (exactly where will you sue?). What is the extent of discovery to be produced on your side? What type of discovery do you need from defendant? What is the litigation personality of the defendant? ("scorched earth", "settle promptly", fight some, settle some?).
(7) Size Up the Defendant
Google is not sufficient. Dun & Bradstreet Prior patent litigation. How very important is the item to defendant? Who are the potential witnesses for the defendant? Did they publish anything? Is the lawsuit even more critical for you or the defendant? If you win, will you end up closing down the corporation? Will they go BK? Who are their usual litigation attorneys?
(8) Evaluation Your Evidence
Collect all documents. Anticipate documents to be requested by defendant in discovery. (Item brochures, advertisements, lab notebooks, invention disclosures, patentability searches, prosecution history). Evaluation patent prosecution attorney's files. Electronic facts? Interview key witnesses. (Inventor, technicians) Interview most likely witnesses. What trade secrets are likely to be revealed in litigation? Are relevant documents marked as confidential? Is information kept secure to preserve trade secret protection? Any preferred mode troubles?
(9) Retain Expert Witnesses
Analyze credibility, previous work, publications, Ask professional about defendants' likely professionals
(10) Make a Litigation Plan
Budget for litigation fees. Strategy discovery, motions, summary judgment, anticipate defendant's likely motions. Identify which elements of your case pose non-routine concerns (e.g., software, medical procedures, divided infringement, inequitable conduct).
No comments:
Post a Comment