DEFENDING AN INFRINGEMENT ACTION
Sometimes, you may find yourself on the receiving end of an infringement allegation. This usually takes the form of a ‘letter before action’ arriving and requesting that you immediately cease infringing a particular patent, design or trade mark. Such a letter may also be accompanied by undertakings which may contain various demands requesting compensation of one kind or another, and assurances regarding prevention of future infringement.
Albright IP can help you deal with this sort of situation. Infringement is rarely a clear-cut issue, but we can review the intellectual property rights at hand and advise you on whether the case against you is weak or strong. We can also suggest potential avenues for counter-attack, such as reasons that the intellectual property right may be invalid. In this scenario, this could provide leverage for obtaining a royalty-free license, for example, in exchange for silence on the issue of validity.
Often, issues of infringement can be settled by negotiating, rather than litigating in court. This is because court cases can be relatively expensive, and so it can be more cost-effective for both parties to settle out of court. However, if negotiations fail to resolve the issue, Albright IP can advise you further and guide you through the process of defending yourself in court. One of the most commonly-used courts in IP cases is the IPEC (Intellectual Property Enterprise Court), which is both cost-effective and a relatively fast route for settling court cases. There is also a cap on recoverable costs, which takes away some of the uncertainty in overall court costs.
The important thing to do is to engage professional attorneys before responding to any sort of letter claiming you infringe someone else’s rights. Please contact us now to discuss your situation further with one of our experienced attorneys.
CASE STUDIES
Defending allegation of copyright infringement
Our client was accused of using a photograph without permission on their website. Although the allegedly infringing photograph was quickly removed from the website the Claimant acted aggressively and issued a claim for several thousand pounds in the Intellectual Property Enterprise Court. Albright IP drafted a defence to the claim and we guided our client through the procedure. The claim was thrown out and our client obtained an order that the unsuccessful Claimant paid all of the legal fees incurred.
Negotiating settlement of alleged trade mark, design and copyright infringement
Our client was accused by a well-known brand of infringing a variety of IP rights with their line of products. We advised on the prospects of success and made an offer to settle under Part 36 of the Civil Procedure Rules. This “Part 36” procedure can be very powerful because of the consequences in recoverable legal costs if a party which should have accepted does not do so. Our offer was accepted and the case was settled for about 15% of the damages the Claimant had initially demanded.
Negotiating a way around a patent
Our client’s new product was proving successful, but a competitor said it infringed their European patent. On investigation, we found that the patent was potentially vulnerable to an invalidity attack. We also advised our client that the product could be changed only very slightly to avoid infringement. We negotiated a resolution involving no money being paid and the product being altered slightly, without the loss of any important features.
