Patent Litigation Pre-Suit Toolkit

Resources to assist a patent owner's counsel in evaluating and preparing to commence patent litigation in federal district court under the Patent Act. It also includes resources focusing on specialized patent litigation under the Hatch-Waxman Act and before the International Trade Commission (ITC).  

Practical Law Intellectual Property & Technology

A company's patents are often among its most valuable assets. Given the business and competitive importance of patents, a company should be prepared to take appropriate enforcement actions against infringers. Proper patent enforcement includes a variety of measures. In cases where the patent infringement is serious, commencing litigation in federal district court under the Patent Act may be the most appropriate course of action to protect the company's patent rights. However, litigation can be time-consuming and expensive and should not be undertaken lightly. Before advising a client to pursue litigation, counsel must carefully evaluate many factors, including:

  • The merits of the parties' potential claims, defenses, and remedies.

  • The cost of litigation.

  • The suitability of non-judicial forums.

  • The need for immediate relief.

  • The client's prospects of collecting on a judgment.

  • The availability of alternative dispute resolution.

  • The advisability of sending a cease and desist letter.

  • Subject matter jurisdiction.

  • Personal jurisdiction.

  • Proper venue.

  • Local bar admission.

This Toolkit provides several continuously maintained resources designed to help patent owner's counsel evaluate and prepare to initiate patent litigation in federal district court under the Patent Act, from running a conflicts check to drafting the complaint and other case initiating documents. This Toolkit also includes resources concerning specialized patent litigation:

 

Pre-Suit Considerations

 

Evaluating Claims and Defenses

 

Pleadings and Notice Letters

 

Licensing and Settlement

 
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