What to do, and what it actually means
| The step | What it actually means |
|---|---|
| First, what has and has not happened | |
| A complaint is an allegation | It is one side's account, filed by them, and being sued is not a finding of anything. Companies of every size receive these. Nor is a demand letter nothing, if that is what arrived instead: it opens a range of outcomes from a license negotiation to litigation, and it starts real obligations, including preserving documents. Neither document is a verdict, and neither is a reason to make a decision in the first hour. |
| You can infringe something you never saw | This is the fact that surprises people most, and it is worth knowing before the first conversation, because it changes what the argument is about. Copying is not required. If a product does what one of the numbered claims at the end of a patent describes, it can infringe even if your company invented it independently and had never heard of the patent or its owner. So "we built this ourselves" is true, important, and not by itself a defense. |
| In the first day or two | |
| Confirm the real deadline | In federal court a response to a complaint is generally due 21 days after service, but a waiver or an extension can move that date, and it is specific to your court and your case. Nobody should tell you your date from a website, including this one. Somebody has to look at what was served, when, and how, and confirm it. That is the first phone call, and it is a short one. |
| Stop the automatic deletion | Most companies delete email and files on a schedule without anyone thinking about it. That routine deletion has to be suspended for anything touching the accused product as soon as a dispute appears, and courts treat failures here seriously. It is also a cost item, because reconstructing what was thrown away is expensive and awkward. This usually means one message to whoever administers the mail system, and one named person responsible for it afterwards. |
| Call the insurance broker | Some business policies cover intellectual property defense, and late notice can forfeit that coverage entirely. Asking costs nothing and takes an afternoon. This is the item most often missed, and it is missed because nobody thinks of a patent complaint as an insurance event. |
| Keep speculation out of email | The instinct is to write to the engineering team asking whether they think this thing infringes. Those messages can end up being read by strangers later, and a half-informed guess written on day two is a poor document to have in the file. Questions about the merits belong in a conversation with counsel, where the rules about confidentiality are different. Say clearly that people should keep working and stop discussing the allegation in writing. |
| What to gather | |
| The patent numbers | Every patent asserted against you, by number. Everything else follows from those. Each one has a public file at the patent office containing the whole back and forth with the examiner, and that file is where a lot of the case is decided. |
| Everything you received, with dates | The complaint, any letters that came before it, envelopes, delivery receipts, emails, and the date each one arrived and who received it. How and when you were served affects the deadline, so the boring details matter more than they look. |
| A plain description of how it works | Not marketing copy. A description of what the accused product actually does, written by someone who built it, in ordinary language. If it does not exist yet, it will have to be written eventually, and it is cheaper to write it now than during discovery. |
| Who built it, and when | Names and dates. Who designed it, who wrote the code or ran the process, when the work was done, and where the old design files live. These people become the centre of the case whether or not anyone planned for that, and finding them in week one is much easier than finding them in month nine. |
| Choosing who represents you | |
| Interview more than one | Even if you already know who you are going to hire. Ask the same questions of each of them and write the answers down, because the differences between the answers will teach you more than any single answer will. This is a purchase that runs for a long time, and it is the last moment when comparing is easy. |
| Listen for what they will not do | A lawyer who cannot name a single thing they would decline to spend your money on is describing a case with no edges, where every argument gets made and the budget is set by the other side's appetite. A lawyer who tells you the matter is not theirs and hands you a name has given you something more useful than availability. |
| What a number this early is worth | Nobody can honestly price this before reading the patent, the claims asserted against you, the record behind them at the patent office and the court the case sits in. A figure produced before that reading is a guess in a good suit, and a confident guess is worse than an honest "not yet". What you can require, once the reading is done, is a budget broken out by phase with the assumptions written next to it, so that when an assumption breaks you hear why the number moved rather than reading it on an invoice. |
Questions worth asking every lawyer you interview
- Can you understand our technology at the level it was built, or will you depend on an expert to translate it for you?
- Will you read the patent's full prosecution history yourself?
- Can you explain what this means for the business in language our board can use?
- How will you explain this technology to a judge or a jury who has never seen it?
- What would you decline to spend our money on?
- How do you create pressure without letting the cost run away?
- Who will do the actual work, and at what rate?
- What would have to change for your budget to be wrong, and how quickly would we hear about it?
The limits of everything above
All of it is general information about how patent disputes usually work in the United States. It is not legal advice, it is not about your case, and reading it does not create an attorney-client relationship with anyone. No deadline stated here is your deadline. Please do not send confidential information through this site or by email to someone who is not yet your lawyer.
If it would help to talk it through, the ways to reach Jesse Camacho are here, and legal inquiries route through Practus, LLP. There is no form on this site and nothing you have to fill in first.