Pre-Litigation Checklist for the Defendant in Patent Infringement Cases
Hello my name is Tim Maier, registered patent attorney. Today I’m going to talk about one of my favorite things; Pre-Litigation Checklist for the Defendant. You’re a growing business, you get a cease and desist letter, or you get a complaint filed against you for patent infringement, what do you do?
The First steps are: take a look at the patent, hire a patent attorney to look into the prosecution history. To really determine to scope of those claims, how broader or how narrow are they? Are there any estoppels issues in the prosecution that could preclude your product from having those claims read on it? The next step is conductive validity study. Do a broad search. Search the foreign art extensively, especially search published applications and non-patent literature. Find references you could potentially use to file inter-parte re-exam or ex parte re-exam to invalidate or narrow the scopes of the asserter’s patent or patents. Those are some the first steps you should take.
Next is communicating with opposing councils. Setting up, negotiating using your prior art references that you found as leverage to negotiate the settlement. It’s typically better to settle these types of assertions and be more cost efficient and better for your company than to litigate them. So it’s good to get a hold of those prior art references early on, it could save you a lot of money down the road in the litigation process.
I’m Tim Maier, thanks for listening.
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