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IP Strategy

Building a Winning Patent Assertion Strategy

By July 25, 2022No Comments

While the traditional innovation lifecycle consists of six steps ending with the monetization of a technology, adding a seventh may be appropriate. While it isn’t strictly an innovative process, patent assertion is an important step in generating and maintaining the value a commercial entity or an inventor establishes when they are successfully awarded a patent.

It is the responsibility of the patent holder to enforce the integrity of their patent. Patent assertion entails legally enforcing ownership of a patent against an entity that has infringed upon it. This process can require substantial resources and investment for patent-holding entities big and small.

Successfully protecting a patent doesn’t just take place in a courtroom. It is an ongoing process requiring patent holders to be proactive. Those whose job it is to protect patents from infringement must have a multidisciplinary skill-set and intimate knowledge of the tools available to them. Being able to search databases and interpret information regarding up-to-date ownership information, relevant prior art, and important legal data are all key.

Beyond the obvious benefit of protecting the legal monopoly afforded by a patent, having an understanding of a current commercial and IP landscape can help identify licensing and transfer opportunities. Successfully asserted patents are more viable on a number of important fronts and can see their overall value increase.

Guidelines for Asserting a Patent

While the decision to litigate patent infringement in civil court is determined on a case-by-case basis, there are ways to start thinking about the process so you can decide your assertion strategy. Implementing these could include an in-house legal team or a third party.

1) Consider your patent’s age. Any patent can be infringed upon but newer patents representing a small differentiation from other prior art can be targets for willful or literal Infringement. They can also be targeted for less direct but still serious indirect or contributory infringement.

When technology or machinery is used in a variety of processes and industries it can also attract infringement. These instances can sometimes fall under the Doctrine of Equivalents, where the technology in use is not an exact replica of the patent holder’s version but share technical similarities or accomplish a similar goal.

2) When examining a patent’s history, keep in mind the date of filing. The USTPO moved to a “first to file” system from a “first to invent” system in 2013. Enforcing patent rights from the beginning helps set precedent and establish a history of enforcement. Older patents can also be infringed upon and may still be worth asserting in open court.

3) Consider your patent’s record of assertion. Has this patent been successfully asserted previously and on what grounds? Prior assertion can make future assertion more likely. Successful assertion can also make technology more viable in the marketplace and be more attractive to third parties seeking to monetize it.

4) Analyze the defendant’s legal standing.Conduct due diligence in analyzing initial infringement and any cases for invalidity–either for your own patent or that of the defendant. Begin determining the monetary impact of infringement and how it has affected your business. Identify relevant witnesses using IP.com’s international, legal, and corporate tree databases that could support litigation.

5) Have counsel and investors help validate the strength of a patent portfolio and provide insight into potential risks and strategic considerations of litigation. An infringer may have violated a patent on a variety of legal grounds but pursuing recourse in a way you can prove and that can readily support future assertion.

Legal Pillars of Assertion

Generally speaking, successfully enforcing a patent requires the following:

  1. Proving the validity of the patent
  2. Proving ownership of the patent
  3. Identifying the infringer
  4. Proving infringement of the patent

It’s important to note that, unlike some other forms of intellectual property, no common-law protection exists for patents in the U.S. Instead, registration with the USPTO is the only way to prove ownership. Nonetheless, establishing ownership–whether yours or an infringing technology’s, is a vital initial step to assertion. IP.com’s InnovationQ Plus® has access to millions of records across dozens of global databases, including the IEEE journals and our own Prior Art Database (PAD). The powerful AI-enhanced search functionality can simplify tracking ownership of infringing patents.

Since patents can be transferred and assigned, proving ownership requires extensive documentation. Any error or defect in this documentation can affect the ability to bring a cause of action for patent infringement. In addition to its end-to-end innovation solutions suite, IP.com also offers services like editing to help you write accurate, defensible disclosures that can be key in later assertion cases.

Third Party Support for Patent Enforcement

Many patent holders and their related commercial entities facilitate patent enforcement through patent assertion entities (PAE) to varying degrees. These are organizations that purchase rights to a technology with the goal of a) litigating infringement and seeking monetary compensation from violating entities or b) with the intent of generating revenue with licensing arrangements.

Despite some legitimate criticisms, PAEs and similar entities are an important part of the innovation ecosystem and represent a significant opportunity for inventors. Some data even supports the notion that PAEs act as an incentive to invent due to their ability to help independent inventors monetize inventions quickly.

PAEs represent one strategy for asserting a patent, though oftentimes PAEs operate via technology transfer rather than advocating on behalf of third parties. Other strategies involve legal representation experienced in IP assertion to advocate on behalf of a patent holder. Additionally, emerging patent monetization entities (PME) can help patent holders monetize their inventions while receiving a portion of the proceeds generated. Their mission is similar to PAEs but rests more on the commercialization of technology rather than litigation, although the latter can occasionally support the former.

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