What is patent assertion?
One of the synonyms for “assertion” in most dictionaries 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, 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”)
The purpose of patent assertion 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.
Patent assertion via the courts
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.
David versus Goliath struggle
We’ve used the generic “he” to describe the patent owner, but the patent owner can be a man, a woman, a group of people, a business, a university, another type of entity, or some combination of these. 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 resources 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 a patent enforcement firm like General Patent Corporation.
Patent assertion can payoff big!
Despite the seemingly overwhelming odds facing the individual or small business that is up against a large, well funded patent infringer, patent assertion can pay off for the patent owner who is successful in his patent assertion efforts. The award or settlement from a successful patent assertion claim can run from a few thousand dollars to hundreds of thousands of dollars. A few patent owners became millionaires as a result of aggressive and successful patent assertion!
Typical patent assertion settlements
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.
Multiple patent infringers
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 in multiple settlements.
Patent assertion land mines
The patent owner who believes his patent has been infringed needs to be cautious how he pursues his patent assertion effort. There are three common patent assertion mistakes that patent owners make.
1. Lose the Offensive Position: General Patent Corporation strongly recommends against contacting the company or companies you believe are infringing your patent until you have first consulted with a patent enforcement specialist. Writing to or otherwise contacting the company that you believe is infringing your patent may give them the opportunity to launch pre-emptive legal actions that will seriously endanger your case!
2. Run Out of Money: A patent assertion claim and the ensuing patent infringement lawsuit can easily cost a patent assertion plaintiff tens of thousands – even hundreds of thousands − of dollars to pursue. It is not uncommon for a patent infringement litigation costs to run to $1 million or more! The patent owner pursing a patent assertion claim can easily lose his case not because his claim is not just, but because he runs out of money! Patent owners must make sure before they pursue a patent assertion claim that they have the financial resources − or they have a partner with the financial resources − to see the claim through to a successful conclusion!
3. Ruin Their Lives: A recent motion picture, “Flash of Genius,” tells the story of Robert Kearns, the inventor of intermittent windshield wipers whose patent was violated by the US auto industry. While Kearns did eventually win his patent assertion claim, he literally ruined his life in the process, ending up estranged from his family. That is why the patent owner prepared to pursue a patent assertion claim needs to rely on the expertise and extensive resources of a patent enforcement firm such as General Patent Corporation.
The Good News about patent assertion
While patent assertion can be risky if it is not pursued correctly, it does not have to be. Here’s how:
1. Have General Patent Analyze Your Patent Assertion Claim: At no cost to you, General Patent will examine your claim of patent violation and determine the economics of your patent assertion claim. Asking General Patent to analyze your claim it not only free, it also puts you under no obligation to the company.
2. Contingency Representation: Should General Patent believe that you have a winnable and viable patent assertion claim, the company will represent you on a contingency basis. That means that General Patent will finance the entire cost of the patent assertion claim and patent infringement litigation, and will agree to be paid from the proceeds of the settlement, and only if General Patent is successful in securing a settlement! In the unlikely outcome event that General Patent fails to secure a settlement, the company is out the money it spent on the litigation, and there is NO cost to you, the patent owner.
3. Comprehensive Package of Services: General Patent aggressively pursues your patent assertion claim while you pursue your life. General Patent does all the research, locates and engages a law firm to actually try the lawsuit, provides expert witnesses and other support services, and handles all licensing negotiations should there be an the opportunity for an out-of-court settlement.
The first step in patent assertion
If you are a patent owner, and you believe your patent has been violated, the next logical step is to have General Patent analyze your patent assertion claim. There is no cost, and doing so creates no liability on your part. To get started, complete a Proposal Request. Or you can call General Patent at 800-507-6690 Ext. 107 and we will answer any questions you have.