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| Chris Neumeyer, Director, Legal Department, Lite-On Technology Corporation, a speaker at the marcus evans IP Law Asia Summit 2012, on responding to IP infringement demands. |
London, May 10, 2012 - (ACN Newswire) - Legal Counsel must be very careful when responding to claims that their company's products are infringing patents, says Chris Neumeyer, Director, Legal Department, Lite-On Technology Corporation. If handled carefully, many intellectual property (IP) matters that appear serious can be resolved at no cost, he adds. A speaker at the upcoming marcus evans IP Law Asia Summit 2012, in Singapore, 20 - 22 May, Neumeyer offers his expertise into responding to patent licensing claims and avoiding litigation.
- How should Legal Counsel respond to claims that their company's products infringe patents and that their use should be licensed?
Patent licensing demands can be extremely serious and lead to thousands or millions in attorney fees and licensing costs. The good news is that if handled well, such claims can often be resolved at no cost. First, counsel need to review the letter, and evaluate the patent owner, the patents and the products identified. Are there similar cases pending in litigation? Have other companies licensed the patents? As for the products, one must speak with the business units and engineers. What is the sales volume? Are the components purchased from suppliers? Are there possible design-around solutions?
Once these have been evaluated, counsel should send a polite but non-committal response to the sender of the demand, requesting various further information that is required. One should put the ball back into their court and wait. Such claims are often illegitimate and will simply go away when put to the test.
- Should the response be different if it is a customer formally informing them of their alleged infringement of a third party's patents?
There are some differences in how this should be handled. Counsel should first check if there is a signed agreement requiring indemnification and whether it includes any exceptions to such obligations. Often, there is no obligation to indemnify if the claim arises from the customer's specifications. Is that the case here? Counsel should also determine whether the claim arises from components provided by suppliers, in which case they should be responsible.
- What if there is no choice but to either license or litigate? How can Legal Counsel ensure the best possible outcome?
Demanding parties will often make threats and demands that sound very serious, but they may be bluffing. It is important not to give in too early. Determine the seriousness of the threat. Have they filed other lawsuits against others? How long have the discussions been going on for?
If it is clear that litigation is imminent, then counsel should seriously consider mediation or arbitration, as the costs may be much less. If one must litigate, it might make sense to sue the other party first for declaratory relief, to establish the forum of the lawsuit.
In any event, we recommend that counsel always try their best to settle. It is never too late for that.
About the IP Law Asia Summit 2012
This unique forum will take place at the Marina Bay Sands, Bayfront Avenue, Singapore, 20 - 22 May 2012. Offering much more than any conference, exhibition or trade show, this exclusive meeting will bring together esteemed industry thought leaders and solution providers to a highly focused and interactive networking event. The Summit includes presentations on IP protection, strategies to maximise IP monetisation and IP outsourcing. For more information please send an email to info@marcusevanscy.com or visit the event website at www.iplawasia-summit.com/ChrisNeumeyerInterview
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Contact:
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Press Manager, marcus evans, Summits Division
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Topic: Research / Industry Report
Source: marcus evans Summits
Sectors: Daily Finance, Daily News
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