Presentation on theme: "Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent."— Presentation transcript:
Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent infringement (or ”licensing opportunity…”)
The usual disclaimer… Half an hour available Only flavour of topic possible Only in general, non-exhaustive etc.: Basically two avenues: ”pay” or ”fight” Focus on how to ”fight” How to ”pay” (or ”stop”) is simple Power point not a core competence
Is ”Pay” the best outcome ? Why pay (or stop): - put it behind you and focus on your business -minimum ressources required -budget security -patent infringement IS illegal -fighting may be (very) costly (too)
”Fight” Why fight: -you don’t infringe -you can’t (easily) afford to pay (what’s asked) -you don’t WANT to pay (what’s asked) -”what patents ? They were wearing diapers when we first did this” -” – and they know it, too”
If (some extent of) fight Not without risk: -you may loose (anyway), and bigger -it may end up being more expensive -it may tie up ressources in vain -it may deflect your focus -it may create uncertainty for your business
How to fight ? Leverage ! Buy time, investigate, maybe counter-attack Why and how buying time ? -probably discount for this period -the patent holder may get tired -you can investigate (other) defences -do nothing (for a while), then ask for time
Investigate defences Analyse nature of communication: how far up the escalation ladder is it (now) ? Are my products infringing ? Are the patents alive, valid and enforceable ? Are the license terms reasonable/legal ? How strong is the patent holder ? Does he infringe any of YOUR patents ?
Defences Infringement: compare the claims with your products – if no claim charts from patent holder, ask for them (make him work) Duration of patents yet: are they running out in the foreseeable future ? Are the patents valid/enforceable ? Look for invalidity, inequitable conduct, competition law-issues
Invalidity: non-novelty/obviousness Basically the invention made public - prior to the filing date of the patent - in a way enabling a ”person, skilled in the art”, to identify it out or to whom it would have been obvious Prior art oftentimes your own – or other’s – products Obviousness-standard reset in the US in 2007
Inequitable conduct/competition law Excessive number of, inconsistent or improper patents, priority claims, claims, continuations, divisionals, provisionals, prior art-citation Claims, previously opposed, but now asserted Claims, previously rejected, but now filed again with no fact disclosure Claims, known from a due dilligence or from the source of prior art to be invalid
Un-reasonable/illegal license terms Is the royalty rate/structure reasonable/legal ? Similar to competitor’s ? Does the royalty reflect the contribution of the patented technology to the product ? Is back-license mandatory ? Does an attack on the patents mean risk of termination of agreement ? Requirement to disclose future product portfolio ? Customers ? Suppliers ?
Nature of patent holder Wherewithal What outcome would be acceptable to him ? History of approaches/litigation Where on his radar are you ? How well is he organised for this ?
Own/other’s patents infringed ? Any patents, (potentially) owned or licensed, that are infringed by the patent holder ?
Counter-attack Re-examination Litigation - declaratory judgement Competition-/anti-trust authorities (abuse of market domination ? Equal treatment of licensees, incl. any owned by patent holder ?) Round up support Public
”Optimum outcome” ? Pay and get over with ? Investigate/counter-attack to leverage and (maybe/probably) pay less/nothing ? Wipe out patents and destroy patent holder’s revenue stream ? Load the patent holder with cost ? Expose the patent holder to scrutiny/public ? It all depends on everything !
My time is up ! Thank you for attending ! Feel free to contact me Presentation uploaded at: lighting.html