2020 Issue

54 to enforce their patent to prevent others from making and selling their invention. Patent enforcement comes down to safeguarding the patent owner’s market share. This may help to recover the money and effort used to develop the patented invention. Going through the proper processes to establish an effec- tive patent and enforcing it allows the patent owner to be sure that competitors do not reap the rewards of someone else’s hard work. However, patents are not automatically enforced. The patent owner has the responsibility to enforce their patent against infringers, which includes identifying infringers and enforcing the patent against those infringers. First, the patent owner needs to identify potential infringers. Patent owners identify potential infringers in different ways, depending on the market. Infringers of patents for heavy mining equipment may be relatively easily identi- fied, because relatively few companies sell similar pieces of equipment. However, infringers of lower priced goods, such as those sold on Amazon or eBay, may be harder to identify and locate because of the anonymous nature of online sales. Regardless of the market and the nature of the goods protected by the patent, a patent owner can identify potential infringers by monitoring competitors and sales outlets for infringing products. After identifying the infringer, the patent owner needs to decide what relief they want. For example, the patent owner may require the infringer to pay monetary damages. Monetary damages may allow the patent owner to receive the profit that they would have realized if they had sold the same amount of the patented invention. Another route is requiring a license from infringers. A license grants another person or business permission to sell the licensed product, in return for a fee or a portion of the profits of the sales. An additional enforcement option is an injunction. An injunction prevents the infringer from sell- ing the patented product. In some situations, enforcement may include a combination of monetary damages, licenses, and injunctions. In practice, there are several tactics used in patent enforce- ment, including take-down procedures, cease and desist letters, and patent infringement lawsuits. These tactics may result in one or more of the reliefs discussed above, includ- ing monetary damages, licenses, and injunctions. Under- standing which enforcement option makes the most sense for the business allows the patent owner to tailor patent enforcement to their individual needs. 1. Take-Down Procedures Business owners selling items online through retail- ers such as Amazon and eBay may file requests with the retailer to take down infringing products. Some retailers require the patent owner to register the patent with the retailer, and to submit a form for each allegedly infringing product. An employee will then compare the allegedly infringing product with the pat- ent, and determine if the product should be banned from being sold on their website. While not official court proceedings, the take-down procedures for online retailers are often a first step in patent enforce - ment, especially for small business owners. 2. Cease and Desist Letter In some situations, take-down procedures from online retailers may be insufficient to stop infringement or may not be effective for certain infringers, such as those selling the infringing product from their own website or a brick-and-mortar retail store. A cease and desist letter sent to the company selling the infringing goods is an informative letter. The letter gives the competitor the benefit of the doubt while simulta - neously serving as a warning of legal consequences if they do not comply. This option can work well for patent owners hoping to avoid costly legal battles. 3. Filing a Lawsuit A patent infringement lawsuit may be filed against the infringing company. Lawsuits are expensive and time consuming. As such, they may provide the most value when based on a patent with high profits, so that the damages and/or licensing revenue is greater than the cost of the lawsuit. Furthermore, large companies are typically more able to afford an expensive and lengthy litigation. However, the relief offered by lawsuits has the full weight and force of the law behind it. This means that a judgment from a lawsuit (after appeals are exhausted) is final, and the infringing company has to abide by the judgment, or face legal penalties. In summary, enforcement is crucial to maintaining patent rights. Furthermore, patent enforcement allows the patent owner to maintain full control of their proprietary invention throughout the entire life of the patent. Thomas Lingard, a registered patent attorney at Ray Quinney & Nebeker, specializes in preparing and prosecuting domestic and foreign patent applications in a variety of technological areas, includ- ing heavy material handling equipment, drill bits, metallurgical engineering, materials science, additive manufacturing, rotary steerable systems, downhole power generation and distribution, medical devices, and exercise equipment. Thomas has experience in identifying products that potentially infringe his client’s patents, as well as preparing patentability and patent infringement opinions. Prior to becoming an attor- ney, Thomas worked at several mines across the United States and Canada in underground tunneling, shaft sink- ing, and heavy civil construction.