Patent infringement occurs when someone makes, uses, markets, advertises, sells or imports a patented invention or, in some circumstances, its equivalent. A person can also commit “indirect infringement” by actively and knowingly causing someone else to infringe.

If you find yourself facing potential legal action by another party accusing you of patent infringement, what are your options? What are your defenses?

Trying to delay legal expenses is rarely in your best interest; typically, the delay results in higher costs. Most patent cases settle out of court before trial because as research is done into the merits (particulars) of the case, it becomes apparent for one party that litigation would be costly and ineffective, so that party backs down. The quicker these findings are discovered, the lower the legal fees. (Logically, you are paying for your attorney’s time, so faster results means less time and lower legal costs.) With this in mind, investing in a strong defense from the beginning (having more compelling evidence), often results in a lower settlement figure or a faster resolution to the situation.

The two most common defenses of a patent infringement claim are invalidity and non-infringement. You attorney can help you decide on the best approach to develop your defensive position. With an infringement analysis, your attorney identifies potential reasons that your product or process does not infringe on the claimant’s patent. This method is typically the first line of defense. In order to infringe on a patent, elements of your product or process must match each claim in the patent. If your product or process does not match each of the claims in the claimant’s patent, you are not infringing. Another argument could be that the claimant did not properly follow the patent application process (for example, applying outside the grace period allowed after the publication of the patented idea). In this case, the claimant’s product or device is not statutorily patentable subject matter. This is a common defense in business method, software and e-commerce patent areas. Another reason may be that the patent application includes a formal statutory or procedural defect, which would result in an invalid or unenforceable patent.

An attorney can also use a prior art or novelty search to invalidate the patent claims that are cited against you. Search results that yield examples of descriptions or depictions of the patented application that existed before the claimant’s invention might mean that the claimant’s patent is not valid (because it would not have been the first invention of the device or the device is an obvious improvement of the existing technology at the time the patent was filed). In order to use this defense, the descriptions or depictions must be detailed enough to allow a person of “reasonable skill” to work the device based on the information provided. If the claimant’s patent is invalidated, then you can no longer be held liable for infringement.

A patent attorney can assist with claims construction that would properly explain the meaning of the claim terms in a way that would affect the scope of the claims. Terminology used in patent claims may have a meaning that is narrower or broader than the common usage of the word. This could help eliminate the possibility of infringement in some cases. Patents can give particular definitions of words either expressly or impliedly. Also, particular technology or art areas may have designated meaning within their fields.

A patent attorney may also be able to help you assert the defense of inequitable conduct, meaning that the claimant failed to disclose relevant prior art to the USPTO during prosecution of the application. In U.S. patent law, it is the burden of the applicant and his attorneys to disclose relevant prior art that the applicant is aware exists. Inequitable conduct invalidates the entire patent. In order to claim inequitable conduct, the defense must cite the prior art and provide clear and convincing evidence that the claimant acted in a way to intentionally deceive the USPTO. Case law has shown that the more material the prior art, the more that intent may be presumed. With intent being more difficult to prove, the emphasis is generally placed on proving that the omission or misrepresentation was significant.

Infringement claims can have serious legal and costly consequences. The defenses against these claims are quite technical and require an in-depth understanding of the subject area and U.S. patent law. Your best action would be to hire an experienced patent attorney. The initial legal fees could prove a worthwhile investment if your attorney is able to defend  the claims made against you at the earliest stages of conflict.