Q. I RECENTLY BECAME SUSPICIOUS THAT A COMPETITOR IS INFRINGING ON MY INTELLECTUAL PROPERTY. CAN I SEND A CEASE-AND-DESIST LETTER AND THREATEN TO SUE IF THE COMPETITOR DOESN’T STOP?

A. Sending a threatening letter has big risks. Depending upon the precise language used, federal law may allow the recipient to sue for a “declaratory judgment” of non-infringement and/or a ruling that your IP is invalid and unenforceable. This preemptory lawsuit reverses roles, casting you, the IP owner, as the defendant. It also allows an infringer the home field advantage of selecting where to sue. Even if you sue later, important advantages of timing and location have been lost. Recently the U.S. Supreme Court and the U.S Court of Appeals significantly lowered the bar for bringing declaratory judgment actions in IP cases. Now, more than ever before, confronting a suspected infringer without obtaining good legal advice beforehand can land you in court.
 
Q. HOW WILL THE SIGNIFICANT UPHEAVAL IN U.S. PATENT LAW AFFECT YOUR PATENT PORTFOLIO AND LITIGATION STRATEGIES?
 
A. Recent Supreme Court decisions, proposed legislative changes and proposed rule changes may enormously impact the patent landscape.  The majority of these changes substantially weaken patent holders’ ability to enforce patents, and make it substantially more difficult for inventors to obtain patents.  Portfolio and litigation strategies must embrace this changing landscape.
 
Q. WHAT ARE THE FIRST STEPS AN INVENTOR SHOULD TAKE IN PROTECTING AN INVENTION?

A. I recommend that the inventor write and date as much information about the invention as possible. Share little information about the invention with anyone except an engaged attorney and/or those willing to sign confidentiality agreements. Next, interview registered patent attorneys to find one with whom the inventor feels most comfortable.
 
Q.  I NEED TO FILE A PATENT APPLICATION ON AN INVENTION THAT IS CRITICAL TO MY BUSINESS, BUT I KNOW THE PROCESS CAN TAKE YEARS. IS THERE ANYTHING I CAN DO TO SPEED IT UP?

A.  The new “Accelerated Examination” process allows a patent applicant to receive a final decision within 12 months.  This process is particularly useful when a long waiting period would adversely affect the commercial value of the invention.  In order to take advantage of the AE process, an applicant must follow specific procedures, file online, and pay any extra fees.  Those who file accelerated applications are required to conduct thorough searches of the prior art and direct the examiner to the most relevant references.  The process requires more work up-front, but if you’re in a hurry it might be a good choice for you.
 
Q. WHAT EFFORTS, IF ANY, ARE BEING MADE TO ADDRESS THE APPARENT PROLIFERATION OF PATENT LITIGATION INVOLVING PATENT HOLDING COMPANIES?

A. Although patent holding companies (sometimes referred to as “trolls”) are not a new phenomena, patent litigation involving such companies has increased in recent years. In addition, some of the cases have received much media coverage (the Blackberry case in 2005-06). The U. S. Supreme Court has taken more appeals of patent cases in recent years in part, I think, because the issues raised have a direct impact on the patent holding company-type cases. Also, legislation has been introduced in Congress with provisions to address the manner in which patent infringement damages are determined. If passed, such provisions would also directly impact the patent holding companies.
 
Q. HOW CAN I ENSURE THAT I OWN THE INTELLECTUAL PROPERTY WHEN I OUTSOURCE WORK FOR MY BUSINESS?
 
A. It depends on the type of intellectual property. For copyrights in deliverables created by software developers or website designers, a “work for hire” agreement may not insure ownership. Additional contract language often is necessary to own copyrights, even if you have paid for and taken delivery of the work product.
 
Q. WHAT COMMON ERRORS ARE YOU ENCOUNTERING IN THE CLEARING AND REGISTERING OF TRADEMARKS?

A. The “cookie cutter” approach taken by most practitioners fails to take into account important business considerations. Every mark is different and should be treated that way. Additionally, a clean clearance opinion shouldn’t automatically initiate an application. Just because a mark is available doesn’t mean that registration is the best option.
 
Q. WHAT ARE SOME COMMON MISTAKES YOU SEE BEING MADE BY SMALL AND MEDIUM-SIZED COMPANIES IN TODAY’S LITIGIOUS PATENT ENVIRONMENT?

A. Many such mistakes we see relate to communications concerning patent rights. Whether it involves a decision to warn a competitor about potential infringement, or the failure to reasonably address such a warning when received, the potential consequences for not handling these communications appropriately can be extremely costly.