Nobody likes copycats. They reap the benefits without putting in any of the work. In high school, it might have been the kid who cheated off of you to get better grades without doing any of the homework or studying. The adult version of this in the business world is patent infringement, and it is a serious issue.
According to the U.S. Patent and Trademark Office, patent infringement is the act of making, using, selling or offering to sell a patented invention, or importing into the U.S. a product covered by a claim of a patent without the permission of the patent owner. It is an issue that is becoming more prevalent within our industry and it is important that companies know how to best protect their business and what to do should it happen to them.
Protecting Intellectual Property
The first step to protect your business is to secure intellectual property by investing in its protection and enforcement. Without a documented and authorized means of intellectual property protection, such as a patent, it is virtually impossible to find an effective basis to move forward with infringement claims. Many product features, advances and inventions are not patented or patentable and may freely be “copied.” Without a patent, crying “copycat” does not support claims of intellectual property infringement.
In cases in which a company has obtained a patent for intellectual property protection, there are a few steps that should be followed if the company feels one of its products has been copied and wants to claim patent infringement. The first is to seek the advice of legal counsel. It is serious business to claim infringement of a look-alike if there is none. The company needs to hold off on sending any accusatory letters, making statements about copycats, and charging infringement publicly. The company should work with patent counsel to evaluate the infringement against its patent and ensure that it has a basis to move forward.
Once a company is certain it has a foundation to move forward, it should take advantage of options like cease and desist efforts, federal court enforcement action, and customs and International Trade Commission (ITC) proceedings, which are all designed to provide a company with avenues to enforce its rights. The best protection a company has is to pursue and obtain an injunction against the infringing products. An injunction will prevent future violation by the accused company. However, if the accused company violates the injunction by, for example, continuing to sell the infringing product, a contempt citation can be issued, which can result in fines and other disciplinary measures.
Knockoff Products at Trade Shows
There are several steps a company should take if it sees another company exhibiting a knockoff of its product at a trade show. If the company has an injunction in place, it should provide advance notice to the event staff. By doing this, it may have successful results, like the company that caught counterfeit manufacturers at the 2016 SEMA Show in Las Vegas, where U.S. Marshals served papers to a counterfeit manufacturer and seized its merchandise. The exhibitor was asked to leave the trade show.
Without an injunction, a company immediately should seek advice from legal counsel, collect as much information and detail as possible, and notify event staff. There will not be an on-the-spot patent assessment. Absent a court decision, exhibition staff do not have means to assess patent validity and infringement assertions. Convention staff may provide further guidance and help support an injunction in the future. After the show, the company can obtain a cease and desist commitment or injunction against the product. Through counsel, it should provide evidence of injunctions and other enforcement efforts to future exhibitions.
Patent Infringement & Product Certification
If a company infringing on a patented product attempts to certify the product, it adds a further layer of complication to the issue. As with the example for trade shows, certification bodies are not courts and are not in the position to evaluate the validity of intellectual property rights or infringement of patents. Companies should use them as a resource, not as an enforcement forum. Instead, companies should proceed with the enforcement path discussed above with cease and desist efforts, federal court enforcement actions, and customs and ITC proceedings.
If the Water Quality Assn. (WQA) is approached by a company claiming patent infringement for a product certified by one of its product certification programs, the association will reach out to the company of the accused product to remind it of the obligations for certification and the agreement signed when certifying products. WQA’s certification agreement has a specific section referencing patent infringement, and by signing the document, the company is agreeing to submit a product that does not knowingly infringe on any existing, valid patent. If there is a court decision and injunction, WQA can go further and conduct a legal review on a patent-infringing product. Each certification body has its own way of dealing with this issue. If an infringing product is certified by a certification body other than WQA, the company must alert that specific certifier so it can deal with the infringing product according to its own policy.
Industry players are stepping up more than ever to protect themselves, their products and consumers from criminal companies and illegal products. To be effective, we must make sure that the patent infringement claims are valid because one party’s copycat is another party’s open competition to benefit the consumer, so be careful of simple judgements. Research must be done, counsel must be called, court decisions must be executed and enforcement actions must be taken. Protect your products. Don’t let counterfeiters reap the benefits of your hard work.