Patents R Us: Patent Information and Services for Inventors and Patent Owners

Patent FAQ: Frequently Asked Questions about Patents

Q:  What is a patent troll?
A: A derogatory term for a patent owner who attempts to enforce his (or her or its) patent, but does not practice (that is, use the patented invention in a product or service it offers for sale) the patent. Patent law is very clear that a patent owner has the right to enforce his (or her or its) patent regardless of whether or not the patent owner practices the patent. However, the courts have ruled that an NPE (or “non-practicing entity,” the term used to describe patent owners that do not practice their patents) cannot receive injunctive relief. That is, the courts will not order infringers to cease production and or sale of products that use an infringed patent.

Q:  What’s the difference between a trademark and patent? And a service mark?
A: A trademark protects a trade name − like Coca-Cola or Post-it or Windows – while a patent protects an invention. A product or service can or cannot have its trade name trademarked, and a product or service may or may not use a patented invention. A product or service may be both trademarked and patented, or just trademarked, or just patented, or neither. A servicemark is similar to a trade mark, but it covers a service or an advertising slogan. “The American Express Card. Don’t leave home without it.” is a servicemark.

Q:  What does “patent pending” mean?
A: A product is labeled “Patent pending” to establish that the inventor either applied for a patent or will soon be applying for a patent. Should there be a dispute over when the patent was discovered or first used in a product, products labeled “Patent pending” will help resolve that issue. Once a Patent is issued for an invention, the products that use that invention would then be labeled U.S. Patent No. 1,234,567.

Q: Will an IP litigator or patent enforcement firm charge me to look at my patent infringement claim to determine if they want to represent me in a patent infringement lawsuit?
A: Most do not charge anything. Most patent litigation firms and patent enforcement firms will take a look at your patent and who you believe to be infringing the patent to determine if it is a case that is financially viable, and do so at no charge. The decision to take your case is not simply based on whether you have a legitimate claim, but if it makes financial sense to pursue a patent infringement lawsuit against the alleged infringers.

Q:       When would filing a patent infringement lawsuit against a patent infringer NOT “make financial sense?”
A: It is very expensive to launch and prosecute a patent infringement lawsuit. If the patent litigation law firm or patent enforcement firm is going to take a case on a contingency basis, the fees (what the attorneys charge) and disbursements (out-of-pocket expenses) will be paid from the award(s) or settlement(s) the patent infringement lawsuit produces. If the infringer, for example, is a small business with $400,000 in annual sales, it is not likely a lawsuit would ever produce a large enough payout to make financing the cost of the litigation worthwhile.

Q:       If I cannot find a patent litigation law firm or patent enforcement firm to take my patent infringement claim on a contingency basis, what are my alternatives?
A: You have three. (1.) Try the case yourself without an attorney, but that is roughly the equivalent of do-it-yourself dentistry. (2.) Pay a patent litigation law firm or attorney to try the case. You pay them their fees and cover all disbursements. However, whatever award or settlement is produced by the lawsuit is yours. (3.) Drop the matter.

Q:       What is the difference between an award and a settlement?
A: If your patent infringement lawsuit goes to trial, and the court finds in your favor and determines that you are entitled to damages from the defendant, that is an award. An “award” is the damages “awarded” to you by the court. If, however, you and your attorneys meet with the defense team, and you are able to come to an agreement among the parties (what is known as an “out-of-court settlement”), whatever you receive from the defendant is a “settlement.” Very few civil lawsuits – and this includes patent infringement lawsuits – actually go to trial. Most settle out of court.

Q:       If my patent infringement lawsuit settles out of court, what happens to the trial?
A: There is no trial. Both sides notify the court that they reached an agreement, and there is no trial. The court re-schedules the time allotted for the trial to another case. In some cases, however, a settlement is reached after trial. For example, there may be a verdict and an  award, but the defendant has filed an appeal or threatened to file an appeal. Rather than have things drag on for a few more years, both sides will meet and work out a settlement.

Q:       How do I select the right patent agent or patent attorney to help me get my invention patented?
A: There are a few factors to consider. First of all, many patent agents and patent attorneys specialize in a technological area, so if your invention is, for example, electronic, a patent agent or patent attorney who specializes in electrical engineering and electronic devices can clearly do a better job for you than a patent agent or patent attorney who specializes in chemistry or software. The other factor is more touchy-feely. Select someone with whom you feel comfortable and who you believe understands your invention.

Q: I have additional questions.