Position Yourself to Enforce Your Patent on a Contingency Fee Basis
Michael A. Shimokaji
8911 Research Drive
Irvine, CA 92618
Licensed to Practice in California
Southwestern University School of Law (1980)
The American Intellectual Property Law Association has reported that it can cost in excess of $1M to pursue a patent infringement case. You ask yourself - what good did it do me to spend the money for getting the patent when it costs too much to enforce it.
Contingency fee arrangements can you to cost-effectively purse an infringer. But whether you can successfully locate and retain an attorney to take your case on a contingency will depend on what you have done to position yourself for such an arrangement.
Scope of the Infringed Claims
The simpler the patent claim, the easier it is to prove infringement. The greater the number of claim limitations, the greater the likelihood that the infringer will successfully argue that the infringing apparatus/process omits at least one of the claim limitations. Similarly, if a judge or jury must be imaginative or creative to see a correlation between the claim language and the infringing apparatus/process, the harder it is to prove infringement.
Steps can still be taken to eliminate unnecessary claim limitations. Also, the claims may be changed and/or added so that they more easily read on the accused apparatus/process. This might be done through a reissue application. Another possibility is through a continuation of a related application that might exist. Once the remedial steps have been taken, a litigation attorney will be more inclined to represent you on a contingency because proving your case at trial will be easier.
Only a valid patent can be infringed. Yet, this issue is often overlooked when there is a rush to initiate an infringement suit – whether on an hourly fee or contingency fee basis.
Solution - conduct a validity search before approaching the contingency attorney. The search can be one that supplements a prior novelty search or be a completely new one. Whether supplemental or new, the validity search should ideally include the US and foreign countries - particularly, Japan and Europe. These countries are likely to be where the prospective infringer will look for invalidating art, and they are also where there is a relatively high volume of patents being issued.
The validity search may be limited to patents. But if the patented technology is one that is highly technical and rapidly changing, such as biotechnology, it could be beneficial to search non-patent literature. At the other end of the spectrum, if the patented technology is technically simple and slow to change, it would again be beneficial to search non-patent literature.
An attorney looking at your case on a potential contingency basis will have a higher confidence level in the patent’s validity, thus being more inclined to accept a contingency arrangement. Further, if you can provide a written validity opinion, the prospective contingency lawyer will be even more inclined to accept a contingency fee.
Even if armed with a strong validity opinion, the prospective contingency attorney will have a greater comfort level when deciding to accept the case if there exists a written opinion of infringement. Better yet, the opinion may conclude that the infringement was willful. With the potential for a greater recovery due to wilfullness, a lower percentage of your monetary recovery might be acceptable to the contingency attorney.
Typically, a challenge faced by the prospective plaintiff’s attorney is how much in damages is at issue and, therefore, how much will the attorney potentially collect. While primarily a factual investigative issue, the better information you can provide on potential damages, the easier it will be for the prospective contingency attorney to assess the potential collection.
Accordingly, you should collect information on gross sales dollars, unit sales, and gross profit of the infringing apparatus/or process. While the foregoing information may be useful on an industry-wide basis, what is needed is information specific to the prospective infringer.
It goes without saying that, the potential for greater damages suffered by you (and thus greater compensation to the contingency attorney) will motivate the attorney to work on a contingency basis.
You have the opportunity to position your case to be more attractive to a prospective attorney on a contingency basis. Oftentimes, this can be accomplished by working in conjunction with the prospective attorney. However, other matters often distract the prospective attorney while you position your ase. So distracted, the prospective attorney may lose interest in your case. Therefore, it may be best to “get your ducks in line” before approaching the prospective attorney.
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