Initial Responses to a Patent Infringement Complaint Toolkit

Resources for an accused infringer's counsel when deciding how to respond to a patent infringement complaint, including resources on filing an answer to the complaint, moving to dismiss the complaint, moving to transfer venue, and evaluating the merits of initiating any US Patent and Trademark Office (USPTO) post-prosecution patentability proceedings.

Practical Law Intellectual Property & Technology

After a patent ( owner files a complaint for patent infringement, the accused infringer has several options for defending against the claims during the initial stages of the litigation. Depending on the circumstances of the case and the accused infringer's litigation strategy, the accused infringer may be able to dismiss the claims, narrow the scope of the claims, assert its own claims against the patent owner, or transfer the dispute to a more appropriate venue ( . Before deciding how to respond, the accused infringer should evaluate several factors, including:

  • The strength of the patent owner's claims.

  • The strength of the accused infringer's potential defenses.

  • The possibility of asserting any counterclaims against the patent owner.

  • The possibility of filing a patentability proceeding at the US Patent and Trademark Office ( (USPTO).

  • The possibility of early settlement.

  • The appropriateness of the original forum and any alternative forum.

  • Whether the patent owner is a non-practicing entity (NPE).

This Toolkit provides several continuously maintained resources designed to help accused infringers' counsel defend against a patent infringement claim, including:

  • Preparing the pleadings and motions typically filed at the beginning of a patent infringement litigation, including:

  • Evaluating possible patentability proceedings at the USPTO.

  • Assessing considerations unique to litigating against an NPE.

  • Negotiating and drafting a patent license or settlement agreement.


Answering the Complaint


Motions to Dismiss


Motions to Transfer Venue


USPTO Post-Prosecution Patentability Proceedings


Litigating Against a Non-Practicing Entity


Licensing and Settlement

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