Avoiding Patent Infringement—Better To Prevent Than Lament

By Jeffrey M. Kaden

For any business, small or large, be it a start-up or one that is established, it is important to make sure that you are not infringing on the patent rights of another when launching a new product. While there may be some cost that is incurred in conducting appropriate due diligence, doing so is still much less expensive than defending a patent infringement lawsuit. Simply put, ignoring the situation rather than investigating it is simply not good business practice. Here’s why.

Patent litigation, even if you ultimately prevail, is extremely expensive compared to other types of litigation. Legal fees alone, should the lawsuit go to trial, will most likely be in the high six figures. And If you lose, you may be responsible for paying damages as well as the patent owner’s attorney’s fees.

Secondly, a patent owner may seek an injunction in order to prevent the continued production and sale of the alleged infringing product. It can be quite costly to fight an injunction and the threat of a court issuing an injunction could divert attention away from operating your business.

Third, a patent infringement lawsuit will likely require the principals and technical people of the company to become very involved in the litigation. Their depositions may need to be taken. They may need to spend time looking for and reviewing documents and electronic information that might be relevant to the dispute. They may have to testify at trial.

Fourth, the patent owner may decide to sue one or more of your customers. Doing could interfere with your relationships with those customers. And your customers will likely demand that you indemnify them for both legal fees and damages.

So what’s the solution.

Start early with your efforts to avoid patent infringement. This should be done when the product is being created and developed as this is when alternative designs may be possible. If you identify potential infringement issues early on, you can eliminate product designs which could raise an infringement concern.

Conduct a patent infringement search in the records of the U.S. Patent Office. When doing so, you should search for those patents related to the technology that is involved; you may also want to search for patents owned by your competitors.

Look at competitive products for any patent notices. Most companies that own a patent for a particular product will mark the product and/or its packaging with the patent number. Once you have identified the one or more patents that may be of concern, those patents should be reviewed.

Retain the services of a competent patent attorney. Searching for relevant patents is challenging and reviewing and opining on a patent is even more so. All are best performed by an experience patent lawyer, preferably one who has some familiarity or background in the technology that is involved. While retaining competent patent counsel comes with a cost, that cost will be far less than the cost of having to later defend against a patent infringement claim.

Patent infringement is a scary concept for most business owners. However, with the help of your patent attorney and following the steps indicated above, you should be able to significantly reduce the risk of infringing upon another company’s patent rights.