‘I have been accused of intellectual property infringement. What should I do?’ 

Receiving an intellectual property infringement claim, regardless of who you are or how much experience you have, may be a shock. Whether you have received a misconceived complaint or you may have made a genuine mistake, in this practical guide our intellectual property solicitors will explain the steps you need to take to resolve a dispute.

Before you contact an intellectual property solicitor 

• Don't be alarmed – this happens to many businesses at some point in their journey. 
• Do not respond – yet – even to 'without prejudice' letters without first consulting with an intellectual property solicitor. 
• Set any deadlines referenced in the letter, diarise some time to deal with this matter and have a conversation with an intellectual property solicitor as soon as possible. 

At this point, you may be weighing up whether to reduce risk by stopping selling, offering for sale, or importing the allegedly infringing product or stop using the allegedly infringing process – if this is possible. If you are considering this route, our corporate, commercial and civil litigation team will support the intellectual property team in advising whether this could impact on your existing contractual obligations. 

Triage 

Once the letter comes to our intellectual property lawyer, we will triage the situation – establishing whether there is a real risk of imminent litigation and if so in what jurisdiction, for what cause and with what consequences.  Then we will help you form a strategy. 

Strategy 

A good strategy is a logical result of: 

• Identifying what this claim means to you and 
• Understanding what is likely to happen next. 

This requires teamwork. Here are just a few of the questions our experts will consider – some you will answer, some we will: 

The Accuser

• Who sent the letter? Solicitor? Business owner? The attorneys who registered the intellectual property right on behalf of their client? What is their reputation? What country are they in?  
• What’s the backstory? Is there a prior relationship? The hardest intellectual property disputes are often between people who once worked together 
• Will you come across the complainant again in future? How? Is this a tight-knit industrial sector or are these people you never heard of? 
• Has the complainant got deep pockets? Has the complainant got investors with their own agenda? 
• Are they threatening to seek a court order to stop your activities until the case settles (an interim injunction)? 

The Complaint

• Does the complaint appear well-founded, a try-on, or somewhere in between? 
• Are all the legal hurdles for the claim addressed? Accurately?  We will work through these and spot gaps. 
• Have they supplied evidence? Would it stand up in court? 
• Can we see some procedural hurdles to put in their way? If so, would this serve a long-term commercial purpose?  
• Which of our hundreds of previous cases does this most closely resemble? 
• Realistically, what would the intellectual property judges we appear before make of this? 

You

• What resources of time and money do you have to fight this? 
• How high are the stakes for you and the complainant? 

Your Defence strategy

• In some cases, a counter-attack of some form can be mounted to revoke or invalidate the intellectual property relied on, or to contest its ownership 
• This could consist of a counterclaim accompanying the defence, asking the court or tribunal to invalidate or revoke the intellectual property right that is being relied on in the claim
• Grounds for a trade mark invalidation counterclaim could be based on prior use of your trade mark in the country in question or for a patent invalidity counterclaim, you can invite the court to find that the patent was not a true invention, either because it lacked novelty or because it lacked a inventive step.

Remember, to find the right strategy, you and your intellectual property solicitor must exchange information until you establish what this inbound accusation means for you and whether you have the resources to mount an outbound counterclaim. The right answer may lie outside the field of intellectual property altogether and we will bring in civil litigators to support us on any contract or misrepresentation claim that you may be able to bargain with.  

The response to an intellectual property infringement letter 

Our next steps will take into account the many similar cases we have seen before.  Sometimes the most sophisticated strategy results in a short letter – sometimes you won’t even tell your accuser that you are represented. Sometimes attack is the best form of defence.  Sometimes a show of respect is required to smooth troubled waters. What we can promise is that the strategy will be tailored to you. 

The legal background: Snapshot of an intellectual property infringement case 

In the limited number of infringement cases that go to court, accusers need to show that: 

• They have a valid intellectual property right which is in force 
• You have done something which infringes that intellectual property right without their consent 
• What you did is connected to the target jurisdiction 
• There are no statutory exceptions or defences available to you 
• They are the people entitled to a remedy 
• (If they want an injunction) you intend to continue doing what they complained of 

Paying damages usually wouldn’t be dealt with by a court until all the questions above had been dealt with – usually at a second trial.  The legal costs of the infringement battle itself often loom larger than the eventual theoretical damages award and that is why our low cost model can give you an advantage in this struggle.