How Do I Enforce My Patent, and What Monetary Damages Can I Get?
If you suspect that someone is using your patented invention without authorization (referred to as “infringement”), you may want to enforce your patent rights.
The first step is to send a “demand letter” to the person infringing your patent, informing them of the patent and their infringement. The letter puts the infringer on notice that they must stop selling, making, distributing, or importing the infringing product or else you will take action. The demand letter often sets the stage for the accused infringer and the patent owner to negotiate a license for the patent, authorizing the infringer to use the patented invention.
If the infringer is unwilling to negotiate, and continues infringement, you can sue the infringer in federal court. The court, usually through a jury trial, will determine whether your patent meets the requirements for patenting, such as novelty and non-obviousness, whether the infringer has actually infringed your patent, and if so, what compensation (damages) is appropriate.
Two main types of damages are available in patent cases: reasonable royalties and lost profits.
- A reasonable royalty is what the infringer should have paid to you, the patent owner, for the fair market value of a license to use the patent;
- Lost profits are what you, the patent owner, would have earned had the infringement not occurred. Lost profits might include, for example, profits you would have earned on sales that you lost to the infringer because of their use of your patent.
Typically, you and the accused infringer will both retain an expert to determine, and to explain to the court or the jury, what the appropriate reasonable royalty or amount of lost profits.
Note that if you sue an accused infringer in federal court, the accused infringer can challenge your patent in the United States Patent and Trademark Office. Typically, this is done through a procedure called inter partes review, where the accused infringer submits evidence to the Patent Office to show that your invention is not novel or is obvious.
In some cases, someone makes a product overseas that uses your patent, and imports them into the United States without your authorization. In that case, you can file a complaint in the United States International Trade Commission. The Commission will decide whether your patent is valid and whether the accused infringer has actually used your patent without authorization. If so, the agency will issue an order blocking imports of the infringing product. The Commission cannot award damages, however.
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