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How to enforce a design patent?

There are many opinions on how to enforce patents in the USA but I am looking for direct company and/or entrepreneaur experience of enforcing a product design patent that has been infringed.

Not asking for whether a design patent has been infringed. Assume the design patent has been infringed and products are actively being sold online and retail stores. My company operates in the mobile device industry and we manufacture the products we sell.

I know there are many high profile cases on this such as Apple and Samsung "design curves" design patent lawsuit. Not looking for third party observations or things people have heard from someone else. There are many urban legends out there. I am hoping a non-patent lawyer someone can tell their business story of what works and doesn't work. I have already heard that sending letter out is not a good idea and customs enforcement is not effective.

Again, hope to get personal experiences of you enforcing your own patents that have been infringed.

9 Replies

Chris Kwan
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Chris Kwan Entrepreneur
Advocate, Barrister, Solicitor & Registered Patent Agent & Migration Agent Australia (MARN 1576447)
HI, you wrote "I have already heard that sending letter out is not a good idea and customs enforcement is not effective." You need to send a "notice" and it is how you draft that notice that is critical here (so you do need to get some legal assistance or people who are familiar with litigation). You may want to solicit "license" just to see how the party react and see if they are wilful. Make sure, you can provide proof of receipt of your letter of notice (ie use couriers so you can get records) At the end of the day, be prepared to litigate because is a full time job dealings with lawyers. Don't think the other side is willing to write you a cheque or fold. And if they want to negotiate set a time line else you know they are just toying or sizing you up. The use of Without Prejudice is encourage but is only effective when is found in statements minded to resolving disputes (on-going). This gives protection as they are not admissible in Court as evidence against the person who made the statement. Violater.com - Online Property Auction (first in Singapore) Loansyndicate.com - be a banker with pooled peer to peer lending Depositoffer.com - transparency matters ________________________________________
Mark Graham
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Mark Graham Entrepreneur
President & CEO at Caiman, Inc.
Thank you Chris for your response, to explain the "sending a letter out is not a good idea" further. I have been told that in the USA the person who files a court case first has a better chance of winning the case and the warning letter provides the opportunity for them to do so.

So here is the scenario:

1) you send a letter to the patent infringer telling them to stop infringing on your patent because you really don't want to be bothered with the time and expense of a legal case.
2) their lawyer says that they need to sue you right away because they have the "plaintiff advantage" if they file first against you. Plaintiffs are seen as having a more valid claim with juries because they are first to file. Also the first to litigate get to control the time and place of the court case.
3) you have a legal case and now you are wasting your time and money travelling to their location to uphold your patent claim.

On the other hand:

1) You just file your case first with no warning and waste your time and money right away at the location of your chosing.

My premise here is that even if you win you will not recover your costs for your time and money. From what I can determine the rewards from patent infringement do not compensate for your efforts and it would also be easy for the other company to just declare bankruptcy if your patent claim is so huge to actually warrant your efforts.

This is a game that the lawyers play in the USA I am told. So this is why I would like to have an actual patent owner experience on this. For anyone who has a patent all you really want is to prevent others from coping your stuff. Your patents are not a way for laywers to retire while your company sinks.
Steve Owens
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Steve Owens Entrepreneur • Advisor
Finish Line - A Better Way for Small Companies to Develop Products
Would never consider doing anything without a lawyer in a case like this.
Mark Graham
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Mark Graham Entrepreneur
President & CEO at Caiman, Inc.
Thanks Steve,
Yes, I accept that continued patent infringement necessitates legal assistance. I did put forth also that Lawyers like to perpetuate that you need them because they earn money from being involved. However, the fact of whether to hire a lawyer was not my question.

My question was what was the experience of someone who either did or did not get a lawyer to defend their own IP. What was the outcome? How effective were you at defending your patent?

Getting a lawyer is not a solution it is merely an approach to take for some sort of resolution.


Steve Owens
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Steve Owens Entrepreneur • Advisor
Finish Line - A Better Way for Small Companies to Develop Products
Understand Mark.

Good lawyers (true with anyone really) are way too busy to try to convince you that you need them.

I have been involved in this, on both sides, a few times. All but one settled for something reasonable each side could accept. None of them resulted in shutting down the other company. The one case that went to trial - both sides were unhappy.
Paul Garcia
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Paul Garcia Advisor
President at TABLE
Mark, having a patent REQUIRES you to enforce it. So it's not even a question of whether you have to address the company you believe is infringing, you must. Of course their first defense will be to try to invalidate your patent. But you lose your patent anytime you decline to enforce it. What frequently happens is that you can keep it out of court if you force the "infringing" party to buy a license from you. Fighting cases like this, even without going to court, can easily cost you and the other party tens of thousands of dollars in a matter of weeks. You also can't threaten to take them to court if you're not actually going to do so. None of what I've said is legal advice. You can't properly address the issue without an attorney. Hopefully the attorney that helped you file the patent informed you about its perpetual defense and is still available to help you with this case.
Mark Graham
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Mark Graham Entrepreneur
President & CEO at Caiman, Inc.
Thank you Paul, this is the common desire among all patent holders who went through the time and expense of getting patents. You should enforce your patents.

I was looking for personal experiences of actual patent holders out there defending their patents. What was your result Paul for defending your patents? What process did you use to enforce them effectively or not effectively.

As a business person what is the most effective way to enforce your patents. Is there an effective way?

The common train of thought is that you go out and protect your IP with patents because that gives you some business security. I am about to cry "%&#^#" here.

Few possibilities:

1) people have better things to do than answer this question
2) nobody besides the big guys challenge patents and we can see just how successful they are with years and multi-millions spent, appeals etc.
3) there is no good process that makes business sense - both myself and Steve (I believe) are kind of supporting this.

Is the patent industry going to go out of business here everyone? A product (ie. patent) with no value isn't a product is it? The economic future of at least a few patent industry folks needs to be saved, right? ;)

Still hoping to get more personal experiences.
Paul Garcia
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Paul Garcia Advisor
President at TABLE
Mark,
I don't hold any patents, but I live with a patent attorney. The best defense of a patent is a well-written patent. Once it's filed, it's too done, and you have what you have. Too many are poorly written, and this is how they get invalidated. Intellectual property protection and defense is never inexpensive. No matter how good the patent attorney, it mostly comes down to how well the patent was written, and then the evidence against the infringer determines the damages calculation. Lastly it's the deep pockets of the person either trying to invalidate the patent or the deep pockets of the patent holder that directs how things will get resolved. Most executives don't want to actually enter litigation, because it can rapidly total hundreds of thousands of dollars, so resolving through a license for the use of your patent (fee) is often a wiser option, where possible. I can't give you legal advice.

IP is not exactly an "industry" and it will most certainly never go out of business. There is a cottage industry of patent trolls though, who do nothing with the patents they acquire except try to sue people for infringement. There's too much money at stake where trademarks, patents, and copyrights have tremendous value. That's why patents in particular are expensive to get and maintain. Not everything "needs" patent protection, and deciding to apply puts a company on a path that requires budgeting a vigorous defense for the life of the patent.
Mark Graham
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Mark Graham Entrepreneur
President & CEO at Caiman, Inc.
I follow you Paul, our patent is well written...it is infringed plain and simple. Because it is a design patent anyone who can see the infringers product and ours can tell that it is not just close but exactly the same.

There are many statements out there about what people could, want or might do. The real question is what people have heard versus what has actually happened regarding patents being a sound business decision to get as well as uphold. Yes, every patent agent/attorney will say they are something you need. It also makes sense to everyone who has ever invented something unique and useful to try to protect it with a patent...or does it? If they are not easily and successfully enforced and cost you more to enforce them than you get back then "no" they are not a good idea.

I submitted this question along with the general "patent" tag which should have given it some exposure. Yet no-one has come forth and claimed that they have made out like bandits or even successful at enforcing their great patent that was infringed. I am willing to bet it is not because they just had such a great patent that no-one even tried to copy their stuff. I would have expected at least one of the patent trolls out there to comment even on how well they have made out...nothing.

Legends and myths my friend for startups. At this point I believe patents are a tool only for the large companies or the patent trolls as you say that pick on the small companies assuming they will settle and these patent trolls tread very carefully when selecting companies to write letters to.

FYI, my girlfriend is a patent attorney who has just started in this field. she wants to change it so it does work...bless her heart.
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