PINTAS IP Enforcement helps intellectual property owner to proactively protect your profit margin and market share from copycats through effective enforcement tactics.
Reacting To An IP Infringement
- Investigation and evidence collection
- Evaluation of the case
- Evaluations of possible means and reaction plan
Monitoring can be made “spot” or continuosly, by the IPR owner or by experts, formally or informally. Discovering the infringement as soon as possible is essential. The sooner is discovered the infringement less expensive and more effective is the reaction.
Investigation and evidence collection
Before reacting it is important to know infringer and infringement. If formally acquired knowledge can be used as evidence during enforcement. Investigation and evidence collection can be made by the IPRights owner or by experts.
Evaluation of the Case
In the knowledge based economy of today, there is a growing trends to focus more on IP related activities, like brand building and R&D. Limited value added manufacturing activities, are routinely outsourced to third world countries. The value shifting trends can be illustrated by the diagram below.
Evaluations of possible means and reaction plan
Consider the means, targets, timing, cost, etc
The three options opened to IP Owners
A. Cease and Desist letter + negotiation
B. Administrative Enforcement
C. Civil Judicial Action
Cease and Desist Letter
One of the tactical step an IP owner can take in the event of IP infringement is to issue cease and desist letters to the infringers and issue a public warning to the market at large. The Cease and Desist letter can serve as a negotiation chips for ensuing settlement arrangements.
In cases where the infringers do not have the financial means to pay damages, the most effective reaction will be to institute administrative action to put an immediate stop to the infringing actions. The pros and cons of adminstrative actions are summarised as follows:-
Civil Judicial Action
If the defendant is a serious offender and on-going business convern, the IP Owner may want to institute civil judicial actions to claim for damages. The remedies claimable under a civil judicial action include:
A. Injunctive Reliefs
Damages are quantifiable by of actual loss of sale by the plaintiff or account of profit by the infringers.
In a case involving Creative Technology and Apple, Inc, Creative successfully used its patent on “Automatic hierarchical categorization of music by metadata”” to claim $100M from Apple. The one-time licensing payment of $100 million will contribute approximately $.85 of earnings per share to Creative’s revenues for the quarter, ending September 30, 2006. After the settlement was announced during after-hours trading, Creative share price surged nearly 37 percent. As a result, Creative also become a “Made For iPod” program partner.
In another case involvoing Amazon.com and Barnesandnobel,com, Online retail giant Amazon.com has filed suit against Barnesandnoble.com, alleging that the rival book and music e-tailer illegally copied Amazon’s patented 1-Click technology.The company began offering the 1-Click feature in September 1997. The case was settled for unspecified amount of damages.