Santa Ana, CA asked in Patents (Intellectual Property) for California

Q: How can I determine if a patent i'm purchasing has been involved in a lawsuit since I can't search Justia by patent #?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: Buying a patent, or a portfolio of patents, is in many ways similar to buying a business, or a car, or a house. Before you agree to purchase the patent, you really need to have someone look at it. Someone who understands patent law, understands patent prosecution, patent litigation, etc. This process is called "due diligence."

Unless you are a patent lawyer, you really should not be doing due diligence yourself. At the end of the due diligence analysis, the patent attorney will point out all of the weaknesses that were found. There always are some weaknesses, and then it is up to you to see if it still makes sense to buy it, and if so, how much to pay for it.

To answer your question, to find out if a US patent has been involved in a lawsuit, you simply look it up on LexisNexis or WestLaw. Typically though, this is a minor part of doing due diligence -- I've done many due diligence analyses, and running across a litigated patent is rare.

1 user found this answer helpful

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: There is a law that when someone files a complaint for patent infringement in a Federal District Court, that the clerk of court has to fill out a form noting the patents that are involved. This information is reported to the USPTO and put into a database. You can search this information here. http://e-foia.uspto.gov/Foia/NOSReadingRoom.jsp

Note -- sometimes this process fails. Either the clerk of court does not send the required notice or does so in a way that a data entry person at the USPTO does not like or there is some other problem. So I have looked for notice of litigation in this system and not found a litigation that did exist.

You can augment the process by searching for news stories in Google or some other search engine. Although many news stories about a newly filed litigation will leave out the patent number, if the story is widely reported, someone may include that detail.

Note further--Many patents are used in pre-litigation cease and desist letters. The party receiving the request to cease and desist will go through the same types of due diligence to decide whether the settle the dispute or litigate. Many strong patents are asserted repeatedly and never subject of formal litigation. Conversely, many weak patents are not brought to a formal litigation stage as the patent is a mere paper tiger that does not frighten sophisticated parties and when they respond to the cease and desist letter, the patent owner retreats hoping to strike against a less informed party later.

The attorney assisting you with the purchase of the patent or the bigger transaction should be working with you to ask whether this patent has been presented to any potential infringers or competitors and if so, what was their response. If they responded that the patent was too narrow to apply to them or too broad so that it was invalid in light of the prior art, then that is relevant to your due diligence.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

1 user found this answer helpful

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