Patent Assertion

The adoption of patented technology can be rapid or gradual. But given the complexity of the current patent landscape I can help you maximize the profitability of your current intellectual property rights.

One of the synonyms for “assertion” is “declaration,” and an appropriate synonym it is for the patent owner who believes his patent has been infringed. The US Patent Office issues patents, but it does not enforce them. Assertion of a patent is totally up to the patent owner. It is the patent owner who must make a “declaration” that a person or business has infringed his patent!

The goal of patent assertion (or “stick licensing”)
 is not retribution and not even justice; it is compensation. The patent owner whose patent has been violated is entitled to compensation for prior and future use of the patent. When a patent owner takes a patent infringer to court and manages to secure a licensing agreement from the patent infringer, this is often referred to as “stick licensing” since the patent user/infringer was coerced into licensing the patent.

In a criminal trial, the burden of proof is on the prosecution. In civil proceedings, the burden of proof is on the plaintiff. The patent owner who pursues a patent assertion lawsuit against an alleged violator of his patent has to prove that the defendant is, in fact, violating the patent. This can be done by reverse engineering the accused product, and it will require the services of an expert such as an engineer or scientist who has credentials and will be believable in court as an expert witness.

The violator of the patent is most often a business − very often a large business. Thus is created the classic David vs. Goliath struggle between the individual or small business with limited finances and resourcess, and the large corporation with virtually unlimited resources and deep pockets. As a result, few patent owners – unless they are well financed themselves – can succeed in patent assertion against a large corporation by themselves. They must often take advantage of the services offered by an experienced patent attorney.

When a patent owner is able to reach a licensing agreement with a patent infringer, the settlement technically covers both prior use of the patent and a royalty for future use of the patent. Some patent licensees will opt to pay the patent owner on a quarterly or annual basis for use of the patent based on unit sales of the product or service that uses the patent in question, and these payments will continue until the patent expires. Most companies, however, prefer to make a single payment, so they will estimate the sales of the product that uses the patent over the remaining years of the patent, and pay a lump sum to the patent owner.

It is not uncommon for patent assertion to be directed at several patent infringers. There have been many patent assertion claims in which the patent owner claimed that several companies manufacturing similar – often competing – products were all infringing the same patent. In such cases, patent assertion claims against multiple alleged infringers of the patent can result.

While patent assertion can be risky if it is not pursued correctly, it does not have to be. Let’s start by discussing your case and examining your claim of patent violation. From there we can easily assess the economics of proceeding further with your claim.

Periodic portfolio analyses can help identify patents that have high licensing potential. Value can be unlocked by approaching and negotiating with potential licensees, including potential infringers.