INTELLECTUAL PROPERT Y
Suing a Foreign Patent Infringer By MICHAEL ALBERT, JASON BALICH AND ALEXANDRA KIM
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foreign company sees your success in the U.S. market and copies your product, infringing your U.S. patent in the process. How do you make them stop? Start with a cease and desist letter. The foreign company may simply not have examined whether your product or service is protected by a patent. Sending a letter explaining their infringement is often a good first step and may yield results. If they don’t stop, the letter and the infringer’s response could help establish personal jurisdiction or demonstrate willful conduct, potentially allowing recovery of multiple damages and attorneys’ fees. An
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aggressive letter is not risk-free, however. It can enable the defendant to file a declaratory judgment in an unfavorable forum. If a letter doesn’t work, it may be time for litigation. Your task then is to decide where to file your infringement action. If the foreign company imports an infringing product or a product made by an infringing process, and you have the required “domestic industry” (e.g., you make or sell your patented product in the United States or license others to do so), then you could file a complaint with the U.S. International Trade Commission (ITC). There are many benefits to ITC litigation. First, it moves quickly — about
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eighteen months from initiation until a final order. Compare that with two or three years to bring a patent infringement case to trial in a federal district court. Second, at the ITC, you don’t need to prove personal jurisdiction over the foreign company. The jurisdiction is over the infringing products. Third, if you win, you are almost automatically entitled to an “exclusion order” keeping the infringing goods out of the country. But the ITC cannot offer all the relief you may be seeking. Only federal district courts can award monetary damages. If you cannot file in the ITC or are primarily seeking damages rather than an exclusion order, BACK TO CONTENTS
