[Patent Talk] Strategies for Responding to Patent Infringement

This is a column contributed by our patent attorney Taeyoung Lee to Etoday on September 14, 2021. It discusses in detail strategies for responding when patent infringement is discovered.

[Patent Talk] Strategies for Responding to Patent Infringement

Many people assume that simply filing a patent application will stop third parties from infringing, but in reality it is not that simple. Under the All Elements Rule, infringement is established only when a third party practices every element recited in a patent claim. For example, if a registered claim consists of elements "a+b+c," a third party practicing "a+b+c+d" infringes, but a third party practicing "a+b+d" does not, because element c is missing.

Cases where infringement by a third party is discovered after filing can be broadly divided into two: infringement discovered while the application is still pending, and infringement discovered after registration. Strictly speaking, no right arises before registration, but for convenience I will assume that a potential right exists.

First, if a third party infringes while the application is pending, you should have a patent attorney check whether the third party's invention practices all elements of the patent claims. If infringement is established, under Article 65(2) of the Patent Act you may give written warning after the application has been published, and after the patent is registered you may claim compensation equivalent to a royalty for the working that took place between the warning and registration. However, since the scope of rights may change during examination while the application is pending, the tone of the warning letter should be calibrated appropriately, and you should keep in mind that sending warning letters indiscriminately to the third party's business partners may constitute interference with business.

Once the patent has been granted, if a patent attorney's review concludes that infringement is established, you can consider sending a warning letter and filing an infringement suit. It is advisable, however, to review the validity of the registered patent in advance. That is, through a search for invalidating prior art against the registered patent...

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