Defending intellectual property rights: Establish infringement claims

 

2. Establish infringement claims

To establish valid infringement claims, we recommend that you do the following:

  1. Identify your intellectual property IP rights
  2. Identify the alleged infringer(s)
  3. Collect evidence

Identify your intellectual property rights

Each type of intellectual property (IP) right has different requirements to establish infringement. The first step is to identify the IP rights you own, which will guide your enforcement strategy.

Examples of IP infringement types

Identify the alleged infringer(s)

It is important to identify all parties and locations involved in the infringing activity. These are factors that can significantly impact the time, cost and manner of enforcing your rights. For example, can you verify the legal name and address of the infringer?

You may want to do some research to learn if the infringer has a history of previous infringement allegations or lengthy litigation processes and what means the infringer has (in-house lawyers, financial means to obtain legal expertise, etc.) to deal with any infringement allegations. You may also want to research whether the infringer has the means to pay you, if a court determines that they infringed your IP rights.

Collect evidence

You need evidence to support a valid claim. This means that you need to prove which parts of your IP rights have been infringed by collecting and using evidence. For example, to make a valid claim for patent infringement, you must prove that all essential elements in a patent claim are in the infringing product or process.

Who can help provide you with the information you need

The inventor, author or, designer of your IP

The creator of the IP is a good information source about infringement. They are in tune with the technology, products, services or marketing in the industry.

Staff

Your own staff are likely the most knowledgeable about the goods and services you provide and the industry you are in. Your staff can be a great resource, provided they do not breach any confidentiality agreements that might exist with former employers.

Suppliers, customers or existing IP licensees

Suppliers, customers and existing IP licensees can also provide information about infringement of your IP rights.

Reverse engineering firms

Reverse engineering firms can help you identify patent infringement. These firms buy and disassemble the target products to help you determine whether your patented inventions are being used in the industry by a particular competitor.

Scanning for unauthorized use of IP

Online searching and monitoring services can be hired to scan the Internet for unauthorized use of IP. Other firms offer watch or surveillance services for trademarks that are being filed and that could in turn be opposed through an opposition proceeding.

Licensed private investigators

Although you may have gathered your own evidence of infringement, it is preferable to have additional or corroborative evidence gathered at the direction of an IP lawyer, using the services of an independent third party, like a licensed private investigator. The licensed private investigator can purchase the infringing product, gather information about the infringer, conduct searches online about the infringer and preserve physical or online evidence for use in court or subsequent negotiations.