Consider the following scenario.

After a year or two of patent pending, you finally get a granted patent. Your grand innovation has been acknowledged by a Patent Office as being “novel” and “inventive”. You are the envy of your competitors and investors are queuing up.

You attend a conference and spot one of your competitors standing in front of a poster for their brand-new product (On Sale Now!), which looks a lot like your own patented product. How do you respond?

It may be tempting to go in all guns blazing, perhaps you think of sending them an email in block capitals and with red font accusing them of stealing your idea. However, this is by no means a wise approach, particularly as your competitor may be able to take action against you for making a potentially unjustified threat in such a scenario.

Your first port of call should be your patent attorney.

How do we assess infringement?

The scope of protection provided by a patent is defined by the claims. If an infringing act is carried out in relation to any of the granted claims (for example, manufacturing or selling in a country where the patent is in force), then there is an infringement.

When we assess infringement, we break-up the patent claims into a list of features and map these features to the potentially infringing product.

Consider your patent having the following granted claim:

  1. A device having features A, B and C.

If your competitor’s product is a device with features A, B and C, then there is a good chance of infringement.

Now suppose the above claim had to be amended during examination and your granted claim reads as follows:

  1. A device having features A, B and C, wherein A is coupled to C via B.

In this case, the assessment of infringement can become more complex. The following questions jump out straight away:

  • What does it mean for A to be coupled to C? Is this a mechanical coupling or a different type of coupling?
  • What does it mean to be coupled via B?
  • What happens if the product as sold does not include the coupling at all but is put together in this way by a user at a later stage?
  • What if the product includes an additional component “D” where A is coupled to C via B and D? Does this still fall under the definition of A being coupled to C via B?

The answers to these questions may be straightforward, with a clear picture of infringement or non-infringement coming out of the analysis. However, in other cases the answers may be less clear cut.

Before considering action against a competitor you will want to be clear that there are defensible arguments supporting an assessment of infringement.

 Next steps

Let’s assume a clear case for infringement has been established. What’s next?

To begin with, it is wise to consider what you want to achieve. Do you want to stop your competitor in their tracks, perhaps with a view to receiving some financial compensation for lost sales? Or do you see a licensing opportunity?

Once you know what your strategy is, the next step is typically to contact the competitor, perhaps by sending a cease and desist letter. Prior to this step, it is important that suitable legal advice is sought to avoid common pitfalls that may arise, for example due to groundless threats action – your patent attorney will be able to navigate this area and ensure that the contact made with the competitor is carried out in the best way possible.

In most cases, negotiations will be concluded before going to court, however under certain circumstances you may decide that IP litigation is the way to go.

The other side

You should be aware that your competitor will most likely have their own legal advisers.

Upon receiving your cease and desist letter, they will make their own assessment of infringement and attempt to construct arguments that there is no infringement. They may also consider whether they can work around your patent claims, perhaps by making a trivial modification to their product. Your competitor may also seek to invalidate your patent by attempting to identify prior art that can destroy its novelty or inventive step. Your competitor may also have their own patents that they could use against you.


It is important to consult with a patent attorney before taking any action for infringement, and to reflect fully and realistically on how a competitor’s product reads on to your patent claims.

The above discussion is for a single patent. Holding multiple patents may put you in a better position, particularly if your competitor’s product infringes several patents in your portfolio.

Additionally, you shouldn’t forget other IP rights such as design rights, trade marks and copyright. An IP portfolio encompassing multiple IP rights can potentially “catch” a range of competitor activities thereby placing you in an even stronger position for negotiations.