Ask the Expert: Can you successfully challenge IP infringement?

If a company in a country that doesn't recognize IP rights copies your IP, what's your recourse? Our expert responds.

By Edward Weisz, Cohen Pontani Lieberman & Pavane -- Electronic Business, 7/18/2007

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Question: If a person has a patent (US patent and international) for IP and a company in a country that does not recognize IP rights copies it, what recourse and what may be the upfront costs to litigate the infringement? Is it possible to successfully challenge IP infringement?

Expert response from Edward Weisz, partner, Cohen Pontani Lieberman & Pavane:

Patent rights are territorial. If you have a patent, that patent is enforceable only in the country where it issued. A US patent is enforceable in the US and its territories. Thus, if a competitor is making a product in Canada, for example, which would infringe the US patent but the product is not shipped into the US, then there is no US infringement.

For this reason, many companies will choose to file in certain countries, weighing the costs for filing against the chance that infringement may occur in those countries. For example, a company may choose to file a patent application in Canada, Mexico and the US but may not find it necessary to also seek patent protection in Malaysia.

As for costs, these will vary based on the particular facts of the case and the complexity of the technology covered by the patent. In general, patent litigation is rather expensive and will typically last several years. It is not uncommon for legal fees to approach one million dollars per year. It is possible to successfully defend against patent infringement.

This Q&A is not intended to be a source of legal advice or to create an attorney-client relationship. You should not rely on the information provided herein as legal advice for any purpose, and should always seek the legal advice of competent counsel in your jurisdiction.