Is there anything worse than receiving a demand letter for patent infringement in a given country? Yes! Receiving a demand letter for patent infringement in multiple countries.
Three ways to gain control
The good news for organizations with patent assets across several jurisdictions is that there are a number of things you can do today (that is, as opposed to waiting around to get sued) to take back some control should such a situation arise.
Get your international team in place
Once you are sued, it can be quite a scramble to retain counsel and coordinate your response. With that in mind, use the time you have now to organize and assemble your global team, focusing first on your most important markets. This way, you have ample time to clear any conflicts and get your team members up to speed and acquainted with one another.
To this end, it is most efficient to retain an experienced multinational firm capable of quickly launching a seamless global defence strategy for your patent assets. At Gowling WLG, we have IP litigators in Canada, Europe, Russia, and China; in all other countries, our firm has access to an extensive network of excellent local firms with proven technical and legal expertise.
Reassure your licensees
Most industries constitute small worlds unto themselves, and your licensees and subsidiaries may very well get wind of any trouble brewing with your patent assets. If so, they may grow increasingly nervous about being shut down or sued as well.
A key question to ask yourself is whether you have given your licensees an indemnity whereby you pay for costs of defending patent litigation against them. If you have not, you can be sure that your licensees will be asking you to protect them, so you should start thinking about the terms.
Importantly, if you are still onboarding new licensees and they ask for an indemnity, you will want to structure your agreement and your royalty fees to ensure that you are covered for taking on the additional risks of having to make good on your indemnity.
Consider offensive strategies
As a potential defendant, there is a lot you can do to distract and annoy. One way you can do this is through the filing of anonymous patent challenges, which is permitted in many national patent offices around the world. This will achieve your goal of distracting the patentee by forcing it to spread its resources more thinly and making it feel less confident that its patent would survive a validity challenge before a court if it were to sue.
They may, of course, suspect you are behind all these anonymous challenges, but they won't know for sure. For patentees, this can be a vexing source of uncertainty.
The above are some actions you can take to maintain control of the situation when you suspect that a patentee has set its sights on you. Again, taking meaningful action now is much better than simply living with a sinking feeling of dread and trying to avoid process servers. To learn more, contact any member of Gowling WLG's global IP Team.