Leveraging your IP defensively, such as by counter-suing for infringement of your IP rights, your company can convince others to avoid or settle disputes regarding your company’s allegedly infringing activities.
For example, few companies relish the idea of being threatened with a patent infringement lawsuit. And nearly all companies would greatly prefer to never have to fight such a suit.
Avoiding patent infringement suits starts with avoiding infringement. And fortunately, there are many paths to avoiding infringement, including:
- Identifying others’ patent rights that might cover your company’s products;
- Determining what those rights actually cover;
- Assessing the validity of the patent rights;
- Initially designing your company’s products to avoid patent rights of potential concern;
- Re-designing your company’s products to fall outside such patent rights;
- Explaining convincingly why your company’s products don’t infringe, or why the rights are invalid, to the owner of the rights; and/or
- Obtaining the owner’s authorization for your company to practice the patent rights.
Note that these activities also can apply generally to other types of intellectual property, such as trade secrets, marks, and copyrights.
Once you determine what your opponent’s rights cover, and whether those rights are valid, you might want to negotiate with the owner of the IP rights. Yet negotiating why another’s IP rights are invalid or not infringed can be a delicate exercise, which might evaporate the litigation threat, transform it into a lucrative business deal, or escalate hostilities substantially.
So sometimes, it simply can be easier to avoid another’s IP rights altogether, possibly by initially designing around, or later re-designing the potentially infringing products. Based on my legal understanding of the potentially infringed rights and my technical capabilities, I help my clients find successful design-arounds and re-designs.
In other situations, it can make good business sense to obtain authorization to practice another’s IP rights, such as via obtaining an assignment of, or license to, those rights. I have deep experience in negotiating and preparing both types of agreements.
Finally, sometimes the best defense is a good offense. That is, when accused of infringing a competitor’s IP rights, by analyzing the opponent’s products, you just might find that the opponent actually infringes some of your company’s IP rights. Asserting infringement of those rights, such as via a counter-suit, sometimes can be just the right medicine to neutralize the opponent, and the legal threat they present.