Key considerations when accused of patent infringement

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Have you just received a cease-and-desist letter from someone accusing you of infringing their patent? Does the letter order you to stop all your commercial activities immediately?

An accusation of patent infringement is a serious concern which can prove to be a costly mistake, if ignored. However, there is no need to panic until you really evaluate your situation. Engaging with a competent patent attorney early on can help in achieving a favorable outcome.

It is important to adopt an informed-approach to addressing the cease-and-desist letter. For example, identifying when a response to the notice of infringement is due can help prepare a response strategy and/or engage in settlement discussions. There may be default deadlines to file an answer in response and your patent attorney can help determine those deadlines and any available time extensions. They can also provide an overview of the time and expenses associated with each available response strategy.

A few key considerations that your patent attorney will walk you through are as follows.


Understanding the accusation

It is important to discern exactly what you are being accused of infringing, whether the infringing action is continual or one-off, or if the infringing action can be stopped without affecting your business.

Unjustified threats

In some instances, the accusations might be categorized as unjustified threats. If so, you might be eligible to seek an injunction against the threats, declaration that the threats are unjustified or even recover any damages caused by the unjustified threats through the court system. The onus is then on the person making the threats to prove that they are indeed justified.

Establishing the facts

It is necessary to determine the type of patent being infringed, its in-force status and whether the accusatory claims have been made within the statutory time limit allowed from when the infringing action allegedly occurred.

Evaluating whether the product/process infringes the patent

Your patent attorney will help you evaluate whether your actions constitute infringement, i.e. whether your product or process infringes the patent and which aspect of your product or process is the basis of the infringement accusation.


If it is deemed that your product or process does infringe the patent, the next step would be to determine the validity of the patent being infringed.

A key factor would be to determine whether the patent was granted in a fair and acceptable manner. In some instances, it may be possible to contest and successfully invalidate or narrow the scope of a granted patent such that your infringing action no longer infringes the patent. Specific searches can evaluate whether the patent grant is justified.

Options to invalidate a patent

There are several ways a third-party may initiate proceedings to determine the validity of a granted patent including, but not limited to, filing an opposition request to the patent grant, requesting re-examination or challenging the patent validity during litigation.

Your patent attorney can also help you to identify whether the other party owns an enforceable patent in your commercialization area and determine whether their right to initiate infringement proceedings against your business is valid, as in some cases they might not be.  

Work Arounds

If the patent is valid, there may be several ways to respond to an infringement accusation and your patent attorney can help you figure out the best possible way to respond, without damaging your business, specific to your situation. 

Your patent attorney can also identify possible alternative dispute resolution pathways available to continue your business, either by licensing, inventing around the patent, or negotiating a settlement, and devise the best strategy for your situation. As mentioned earlier, in some instances, there may be a possibility to question the validity of a patent.

It is important to determine whether your ‘infringing’ action really falls within the scope of the patent in question, i.e. whether all the essential features of any one of the broadest and independent claims of the patent are adopted in your product or process.

While it can be stressful to receive a cease-and-desist letter, the fact is that just because an accusation has been made does not establish that the infringement has occurred. Unjustified threats can have serious consequences in the Australlian court system. It is important that you do not respond to such letters before consulting a patent attorney, who can help you understand the letter, establish the facts of your case and guide you on your options to successfully navigate your situation.

If you are worried that you may have infringed someone else’s intellectual property rights, please contact us to arrange a consultation. We’re here and happy to answer your questions.