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How to Approach IP Infringement Action

intelectual_propertyAs a rule of thumb, IP infringement is a matter for the civil courts rather than the criminal ones. This means that if the litigation goes ahead, both the plaintiff and the defendant need to be prepared for hefty legal bills. That being so, it makes sense to approach the situation in the most effective way. Here are some top pointers as to what this means in practice.

Thoroughly check all your facts before deciding what action, if any, to take.

Litigate in haste and repent at leisure.

First of all you need to double-check what specific protection you have (patent, trademark, copyright…) and that it is actually valid and applicable to this case (e.g. have your paid the necessary maintenance fees?). Then you need to determine whether there actually is an infringement and that means gathering all relevant information regarding the alleged infringement. Let us emphasise one point very clearly – there is all the difference in the world between hearing a report (however sincere and reliable) of an infringement and there actually being an infringement. Shooting from the hip and simply firing off an infringement claim can backfire horrendously and lead to expensive legal claims against you.

Once you have done your checking, have an IP attorney double-check your checking

Spending some money up front on an IP attorney can either help to speed your case along or stop you from spending your time, energy and money progressing with a case, which has little to no chance of success.

Try talking before litigating

Even if you and your IP attorney establish that an infringement has taken place, there are two good reasons to try making a friendly approach to the other party before firing off a legal case. Firstly, litigation is an expensive process and is therefore generally best avoided if there is a more affordable alternative. Secondly, the court process is intended to be a last resort rather than a first one, hence courts typically look to see what efforts a plaintiff has made to settle a complaint through other means before deciding what, if anything, to award in the way of costs. An IP attorney will be happy to advise on a suitable way of approaching the other party and may be able to offer some suggestions as to how to resolve the situation to the benefit of both parties, for example by offering to licence them the intellectual property so that the owner receives a fee and the other party can continue with their business on a legal basis.

If talking is unsuccessful, decide if the cost of litigation is really worthwhile

Assuming your IP attorney advises that you could go ahead with litigation, the next question to address is whether or not it is really worth the effort. These days there are basically two aspects to this. The first is the financial impact on your business and the second is the reputational impact on your business. For example, a company illegally using patented technology may have a financial impact on your business, but it may not actually be damaging your reputation. In that case, you would probably base your decision on an estimate of how much money you are losing through their appropriation of your technology. By contrast a company making low-quality items with your trademark on them may not actually be costing you much in the way of lost sales, but could be causing you huge reputational damage. In some situations, however, it may be best just to let the matter rest. For example, there are numerous sellers of hand-made items who illegally use protected characters (such as Disney characters). In theory, the IP owner could pursue this matter, but in practice, there is a high risk of them alienating their customer base by doing so, hence they have traditionally tended to turn a blind eye.


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