Help! My competitor has a patent

You’ve spent months, maybe even years, developing an incredible product or process, only to find out that your competitor has a patent that could block your next steps. It’s frustrating, but here’s the thing: a competitor’s patent doesn’t have to spell the end for your plans. With the right approach, you can navigate this patent challenge and, in some cases, even use it to your advantage.

In this article, we’ll explore several practical steps you can take to address a competitor’s patent.

Understanding the Patent

First things first: what does it mean that your competitor has a patent? A patent is essentially a legal right, giving the patent holder the exclusive authority to prevent others from using, making, or selling their invention for a limited period of time (usually up to 20 years).

It’s however important to understand the distinction between a patent application and a granted patent when it comes to potential infringement. A patent application is just that – an application. While it represents an intention to protect an invention, it doesn’t confer any enforceable rights until the patent is granted. This means that, as long as a patent is still in the application stage, the applicant cannot take legal action against potential infringers. However, once the patent is granted, any infringement that occurs can potentially be pursued in court.

You have confirmed that your competitor indeed has a granted patent? Time for a closer look. If you’ve never browsed a patent before, the real heart of it lies in the claims section. Think of the claims as the line in the sand: they define exactly what the patent protects and what it doesn’t. A word of caution: reading patent claims isn’t always straightforward, and it often helps to have an expert – like a patent attorney – interpret the language for you.

Assessing Infringement Risk

Now you understand what the patent covers, the next step is to see if it overlaps with your product or process. Comparing your product’s features or processes against the claims can help you gauge whether you’re potentially infringing.

Conducting a Freedom-to-Operate (FTO) analysis may be a smart move at this stage. An FTO is a thorough review of existing patents to determine whether your product is clear of potential infringement issues. It’s a broader, more in-depth analysis than simply looking at one patent and helps map out the landscape of IP that might impact your product. Both the EPO and USPTO maintain public patent databases where you can conduct a rough, initial search.

If you do find that your product or process could potentially infringe on a competitor’s patent, there are a few ways to respond.

Exploring Your Options

So, what are your options if you find yourself facing a competitor’s patent? Here are some practical strategies that can help you move forward.

Design Around the Patent

One common approach is to adjust your product to avoid infringing on the competitor’s claims. Known as a “design-around,” this strategy involves tweaking your invention such that it no longer falls under the patent’s protection. For example, if the claims are narrowly defined, you might only need minor changes to keep your product on the market while sidestepping the infringement issue.

Designing around the patent has the distinct advantage of allowing you to move forward without needing to engage in costly legal battles or pay licensing fees. However, it’s not always a simple solution. In some cases, changing your invention could affect your product’s functionality or appeal. And, of course, the practicality of a design-around largely depends on how broadly the patent is written.

Licensing the Patent

When a design-around isn’t practical, licensing the patent may be your next best option. Licensing lets you legally use the patented technology in exchange for a fee – often structured as royalties or a lump-sum payment. If you negotiate a license, you’ll be able to continue using the technology with peace of mind, knowing you’re operating within the bounds of the law.

The big upside to licensing is that it saves you from having to alter your product or process, or take on the risk of a patent dispute. However, it’s not without its challenges. Licensing fees can add up, and if you’re negotiating with a competitor, you’re essentially paying them to keep competing against you. For many companies, this however is a viable way to manage risk and keep their products in the market.

Challenging the Patent

If you believe the competitor’s patent is weak – it may be not all that novel and inventive as they claim – you may consider challenging it.

Challenging a Patent: how does that work?

Opposition and Reexamination

If the patent has only recently been granted, both the EPO and the USPTO provide streamlined procedures for challenging the patent. Following the EPO, you can file an opposition within nine months of the patent being granted. This is an administrative procedure where you present evidence to show that the patent shouldn’t have been granted in the first place. In the U.S., the USPTO doesn’t offer opposition, but they do provide reexamination and inter partes review processes for questioning a patent’s validity.

The beauty of opposing a patent is that, if you’re successful, the patent could be revoked or limited, clearing your path entirely. And even the mere act of filing an opposition can sometimes encourage the patent holder to negotiate. However, challenging a patent isn’t a quick or inexpensive process, and success isn’t guaranteed. While the EPO’s opposition procedure is generally more affordable than full litigation, it still requires solid evidence – like overlooked prior art – and can take time.

Legal Proceedings

Sometimes, when negotiations fail or infringement claims are filed against you, litigation becomes unavoidable. Suing for invalidity is an option if you believe the competitor’s patent doesn’t meet fundamental requirements for patentability. Alternatively, defending against an infringement claim may be necessary to protect your product or process.

The upside here is that a successful legal battle can eliminate the competitor’s patent altogether, protecting your market position and potentially deterring other competitors from going after you. However, litigation is notoriously costly and time-consuming, with no guarantee of success.

Proactive approaches

Beyond these direct approaches, there are a few other ways to manage the impact of a competitor’s patent. This is where your own IP and other proactive measures come into play.

Cross-Licensing

If you hold valuable patents of your own, a cross-licensing agreement could be an option. A cross-licensing agreement allows two parties to grant each other rights to their respective patents, enabling both sides to use the licensed technologies without fear of infringement.

Cross-licensing offers several strategic benefits. It reduces the risk of costly IP litigation by allowing both parties to use each other’s technologies freely, saving time and legal expenses. It may also foster innovation by giving companies access to a broader range of patented technologies, which they can integrate to develop new products and expand market offerings.

Creating leverage

Building your own patent portfolio is a long-term strategy which can give you leverage in negotiations and can act as a deterrent against competitors. Investing in IP takes time and resources, but it can be an effective way to protect your innovations and strengthen your market position over time.

Defensive Publication

Finally, there’s defensive publication – a strategy where you publish your inventions in e.g. industry journals or online. By creating prior art, you prevent others from patenting similar technologies in the future. This is a relatively simple and low-cost approach, and it’s an effective way to establish your position in a competitive landscape without going through the patenting process yourself.

Conclusion

Facing a competitor’s patent can feel like a high-stakes puzzle, but that’s where a patent attorney becomes invaluable. They’ll help you break down the patent’s claims, assess your options, and guide you through design-arounds or licensing negotiations. If challenging the patent is the right path, they’ll know how to present the necessary evidence. Your patent attorney may be a strategic partner who can turn a potential roadblock into an opportunity to refine and strengthen your business approach.