Pre-Litigation Checklist for the Plaintiff in a Patent Infringement Case
Hello my name is Tim Maier, registered patent attorney. I’d like to speak to you for a second today about the pre-litigation checklist for the plaintiff.
You own a patent, you are aware of an infringer; what do you do? What is your checklist of things? First, call patent attorney. Review the prosecution history of you patent. Make a determination that there’s not any estoppels effect in that prosecution history. Second, conduct an infringement study. Look at the claims of your patent or patents and map them onto the infringing product make sure the allegedly infringing product reads on your claims. Third, do a validity study. Have a patent attorney do a search and make sure there’s not a "silver bullet" out there can take out your patent, a piece and prior art that was not considered during patent prosecution. If it is out there file a continuation and have that piece of prior art considered.
The next thing would be looking at all your strategic objectives. Look at your competitor; look at their patent portfolio and published applications. The first things you do if you assert your patent against them would be, send them a cease and desist letter, send them a complaint. If they’re going to be looking at potential counter claims, if you’re knowledgeable about their patents and their published applications, you can preempt many of those attacks and bolster your own entrenchment against them. With knowledge of that in advance it can be quite helpful and advantageous to your position. So that’s just a brief overview on some of the first steps you should take in a pre-litigation checklist for the plaintiff asserting their patent.
I’m Tim Maier. Thanks for listening.
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