Patents R Us: Learn about Patent Enforcement Services for Inventors and Patent Owners

Patent Enforcement

A US Patent does not give the owner of the patent the right to practice that patent because a patent is an exclusionary right: A patent is actually the right to prevent others from using the patent (or, more accurately, the patented invention). The Patent Office issues patents, it does not enforce patents. Patent enforcement (or “patent assertion") is 100% the task of the patent owner. Patent enforcement usually occurs via a civil lawsuit.

When Patent Enforcement Is Needed: When a person, business or other entity uses a patent without the permission of the patent owner, it is up to the patent owner to enforce his (or her or its) patent. Patent infringement − also known as “patent violation” – is not a criminal matter, so patent enforcement must come in the form of a civil lawsuit filed in the federal courts. Patent enforcement is the process of taking the alleged infringer to court, having the court determine if the patent is being infringed, and having the court determine and award damages to the patent owner for the infringement of his patent.  

Patent enforcement is not an easy matter, even though patent infringement is a relatively common event. Sometimes it is willful. A business might use a patented invention in a product or service it sells, and do so knowing full well that they are infringing someone’s patent. They may do so believing the owner will not pursue enforcement of his patent.

There are instances, however, in which a business develops a new technology without realize that someone else independently developed that same technology and patented it, and uses a patented technology, unintentionally committing patent infringement.

Willful vs. Unintentional Patent Enforcement: It does not, however, make any difference whether a patent is being infringed (or "violated”) willfully or unintentionally. The patent owner has the same patent enforcement rights, and it does not make any difference whether or not the patent owner “practices” his patent (that is, uses the patent invention to produce a product or service). The patent owner still has the same patent enforcement rights.

Patent Enforcement Damages: The only difference between willful and unintentional patent infringement, and whether or not the patent owner practices his patent, comes in the damages the patent owner who pursues patent enforcement will receive. Based on the status of the patent owner and the patent infringer, the court will attempt to make an award that fairly compensates the patent enforcement plaintiff in the lawsuit.

• Patent Enforcement in the Case of Unintentional Infringement: The court will determine what the licensing fees would have been, and award that amount to the patent owner.

• Patent Enforcement in the Case of Willful Infringement: The court will determine what the licensing fees would have been, and award that amount to the patent owner. However, the court may also award treble damages to punish the infringer for willful infringement of the patent!

• Patent Enforcement by an NPE: When the patent owner does not practice the patent – what the courts call an “NPE” or “Non-Practicing Entity"), the award for infringement of the patent will be the licensing fees the patent owner would have otherwise received had the infringer licensed the patent.

• Patent Enforcement by a Market Participant: However, when the patent owner practices the patent – that is, uses the patented invention to produce a product or service, or includes it in in a product or service it sells – the courts calls such a patent owner a “market participant.” A market participant is entitled to both the money it would have earned from a license for the patent as well as lost profits on the products and services the company would have made on the products it would have sold, had the infringing party not infringed the patent.

Patent Enforcement Settlement: While the award made after a trial to the patent enforcement plaintiff is based on carefully defined and crafted guidelines, such awards are actually rare. As with most civil litigation in the US, patent infringement lawsuits are rarely settled in court, but are settled via an out-of-court settlement between the parties.

At a trial – whether it is a jury trial or a bench trial at which the judge makes the decision − either side can win, and win big, but either side can also lose, and lose big! So the patent enforcement plaintiff and the patent infringer defendant often meet before the trial begins and work out an agreement they can both live with. An out-of-court settlement also has the advantage that it cannot be appealed and it is a private agreement between the parties, while a verdict and award after trial is a matter of public record.

To find a firm to handle your patent infringement litigation, use our FREE Patent Litigator and Patent Enforcement Firm Referral Service.