Patent infringement or trademark infringement - Many infringements of property rights are not identified until very late. We help you avoid making this mistake by assisting you in an effective monitoring of the market and the competition. Examples for possible ways of doing this are making regular visits to relevant trade fairs, carrying out systematic monitoring of publications or undertaking research into competitors’ patents and patent applications.
If a potential infringement of a property right is identified, a precise analysis of the infringing act and an assessment of the prospects of success of a potential court action enforcing the right are necessary. This requires the infringing act to be investigated. Sometimes it is the case however, that even acquiring a competitor’s potentially infringing product is difficult, because for example the product is still in a prototype phase. Particularly in cases of patents for manufacturing methods, there often is the additional problem that the actual infringement of the property right is not itself accessible, but rather the products obtained by way of the manufacturing method merely suggest an infringement of the property right. In such cases, rights of inspection can be applied for in the courts so as to allow a possible infringement of property rights to be investigated in detail.
If enough information on the property right infringement is available, we start the analysis of prospects for success in a court action enforcing property rights. This analysis is useful irrespective of whether court proceedings on enforcing property rights are actually envisaged. The prospects of success always determine the strength of negotiating positions in pre-court or out-of-court discussions.
Ultimately, the possibility of successfully enforcing property rights in court always constitutes the yardstick for the quality of the property right.
Often, analysis of the legal validity of the property right is also necessary in order for the prospects of success of a defense to a property-rights infringement action can be assessed.
In many cases, earlier prior art exists which can cast doubt on the validity of the property rights. Under certain circumstances this can constitute a significant financial risk associated with the enforcement of property rights.
We will draw on our experience to help you to identify and analyze infringements of your property rights at an early stage. Assessing the prospects of success in court proceedings for the enforcement of property rights is another of our strengths: we will help you always to evaluate accurately and minimize the risks for you and your company that are associated with the enforcement of property rights.
We have extensive experience in the judicial enforcement of intellectual property rights as well as the defense against allegations of infringement. We advise on all forms of alternative dispute regulation in intellectual property rights such as arbitration and mediation.
The owner of an intellectual property right can grant a right of use in the form of a license. There are various regulations to be observed in order to properly negotiate and draft a license agreement. We support both – licensor and licensee in drafting customized agreements.
Patent Infringement:Selling, offering to sell, using, or manufacturing a patented product without the owner’s permission (by license, waiver, or other contract) can constitute infringement and expose the unauthorized seller/user/manufacturer to liability, even if the infringement was unintentional.
Direct Infringement:Actively engaging in a prohibited use of someone else’s patented property.
Induced Infringement:Actively inducing someone to make prohibited use of someone else’s patented property.
Contributory Infringement:Contributing to the unauthorized use of someone else’s patented property can also constitute infringement under patent law.
Question of Law:A question of law is something which is answered by the judge, not by the jury. While the judge may need to rely on various facts in making her decision, the decision is ultimately hers.
Question of Fact:A question of fact is one which is answered by the finder of fact in a case. In a jury trial, it is the jury’s job to make these determinations. When there is no jury, however, the judge will act as the finder of fact (bench trial).
Doctrine of Equivalents:The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.
Until it is understood precisely what is protected, an infringement claim cannot go forward. Recall that the language of a patent claim must be precise. That precision is important not only in securing the patent but also in successfully preventing others from copying the new invention.
Finding the precise boundaries of the claim is a matter of law which is determined by the judge.
The language used in the patent claim, as well as the specification and any diagrams or models of the invention will be relevant to the judge’s decision, as will be the patent prosecution history. Once the scope of the patent has been determined, it falls on the jury/fact-finder to compare the defendant’s product to the properly constructed patent claim.
Claim construction is a vital part of the process, as applying different meaning to a single word or phrase can lead to different outcomes in the case. In addition to the intrinsic evidence mentioned above (the claim, the specification, etc.), the judge may consider extrinsic evidence (such as dictionaries and expert testimony) in arriving at a decision.
In addition, there are certain “canons of construction” which guide the courts in claim construction and interpretation. These include:
- Patentee as lexicographer: The patentee is free to use words in a new way or to create her own words, so long as the usage is clear and is in the specification. Because patents deal with novel technology, novel terms are often the only way to describe the invention.
- Specifications used to understand (not vary, limit, or add claims): While the specification is relevant to claim construction, the specification should only be used to shed light on the claim, rather than to alter the claim in any way.
- Claim differentiation: Multiple claims should be read so as to prevent one claim from being superfluous. In other words, each claim of a patent should be read as having a different meaning from any other claim.
- Claims construed to preserve validity: When two possible interpretations of the claim are possible, one of which would render the claim invalid, the interpretation which preserves the claim’s validity should control.
Patent filings should be left to those experienced in the art. Claim format and drafting can have effects far beyond those envisioned during the heady days following discovery of a new invention. That is, when the initial dust settles and a new storm begins to brew in the form of an infringement case, the precise wording of the claim as well as the patent prosecution history will have a dramatic effect on the outcome of the case. When that day comes, woe unto the legal professional who negligently drafted the patent claim due to a lack of professional expertise.
Patent, Trademark and Design infringement trials take place before the District Courts. During an infringement trial you can claim discontinuance, removal, information, inspection as well as compensation respectively.
The right to obtain information is important for the calculation of the amount of compensation and to prevent a further sale. The right to obtain information extends to quantity, nature, and amount of turnover, origin and distribution channels of the goods as well as the names and addresses of manufacturers, suppliers, previous owners, customers and ordering parties. In the case of a trademark infringement one must note that a claim to cease and desist can lapse if the proprietor of a trademark, while being aware of the use, tolerates this use of its trademark by a third party during a consecutive five years. Furthermore, the trademark proprietor can only demand compensation if the infringer was culpable, this means by intent or slight negligence.
Our services in connection with the enforcement of protection rights include:
Development of a strategy for enforcing your interests
Effective formulation of authorization inquiries, warning letters, Cease and Desist Declarations with penalty, license agreements
Legal representation in infringement trials