Most companies that engage in any research and development activity, or otherwise have an intellectual property portfolio, may occasionally find that a third party may be infringing one or more of its patent claims. Before commencing any patent infringement litigation, counsel should carefully evaluate the particular situation facing the client to determine the appropriate response. By carefully investigating and evaluating the facts, counsel will be able to develop the appropriate litigation strategy that will put the client in the best position to achieve a desirable outcome, whether in the court room or at the negotiating table. For example, the patent owner may consider any of the following actions:

For general information about patent law and infringement, see Practice Notes, Patent: Overview and Patent Infringement Claims and Defenses.

Patent infringement claims are highly fact-specific, so every patent infringement case is different. Despite this, there are certain common themes in every patent litigation. For example, patent litigation:

Because of the challenges involved in patent litigation, parties should carefully consider their initial response to the discovery of alleged patent infringement. Sometimes a patent owner wishes to send a patent notice letter to the alleged infringer.

Although there may be potential benefits to the patent owner from sending a patent notice letter, there is a risk that the letter may provoke the recipient into bringing a declaratory judgment action against the sender in an inconvenient or unfavorable forum, or challenging the patent before the US Patent and Trademark Office. Therefore, before sending the letter, counsel should assess the risk of:

To minimize the risk of engaging in patent litigation in an inconvenient forum, counsel should consider whether it is better to file, but possibly not serve, a complaint in a favorable forum before sending the letter.

For more information on patent notice letters see Standard Document, Patent Notice (Cease and Desist) Letter.

Another important consideration is whether the alleged infringer owns or controls patents that it could assert against the patent owner in a counterclaim. To minimize this risk, patent counsel should review the alleged infringer's patent portfolio to identify any problematic patents and the risk they may pose to the patent owner. For example, if the client has not done so recently, it may want to consider conducting a patent study concerning the alleged infringer's patent portfolio. For more information concerning patent landscape studies generally, see Practice Note, Conducting a Patent Landscape Study.

Even where there is minimal risk from a patent infringement counterclaim, counsel should rigorously evaluate its case before beginning any patent infringement litigation. Practical Law has resources to assist counsel in this analysis. See, for example, the following Practice Notes:

The patent owner typically focuses on its desire to stop the infringing activity as the patent infringement litigation objective and in many situations, patent litigation may be necessary to bring about a desired outcome through an injunction. However, counsel should consider the patent owner's and the alleged infringer's unique positions, and the dynamics, in the relevant marketplace to help the client determine whether it may consider some other arrangement as a successful resolution to the patent infringement. For example, rather than starting a lawsuit, the patent owner may consider other arrangements, such as a licensing, joint development, manufacturing, or distribution arrangement, or may even consider acquiring the alleged infringer. These potential business arrangements may be appropriate based on the client's business objectives, which may in turn vary depending on whether the infringement is by:

Practical Law has many resources to aid counsel in negotiating and drafting various agreements that could resolve patent infringement disputes through some type of business arrangement. See for example the following Standard Documents: