Evaluating a patent assertion

What should a company evaluate before asserting a patent?

Start with the business objective: compensation, a license, protection of a product market, or relief against infringing imports. An initial review can address the following questions:

• Rights. Who owns the patent, what licenses or other agreements affect it, and what is its remaining term?
• Technical evidence. For a utility patent, how do the asserted claims map to the accused product or process? What testing, documentation, or additional investigation is needed?
• Potential defenses. What questions about claim meaning, prior art, validity, enforceability, or existing authorization should be tested before taking a position?
• Economics. What evidence supports the proposed damages theory, and could marking or notice affect recoverable damages?
• Forum and remedy. Is district-court litigation appropriate? If imports are involved, does an ITC investigation fit the facts and desired relief?

Identify the assumptions and evidence gaps before deciding on further investigation, licensing, or litigation. Counsel should assess the implications before an infringement accusation or complaint.

Further reading: Managing a patent · USPTO; Marking and notice · 35 U.S.C. § 287; Patent damages · 35 U.S.C. § 284; Federal Rules of Civil Procedure · U.S. Courts.