My signature Clean Shopper shopping cart cover was the first product of its kind. I know this because my patent dates back to 1991, several years before any other similar patent application was submitted. Technically, this means my patent has the benefit of owning “prior art.” Prior art allows me to use the term Original with respect to my Clean Shopper shopping cart cover and it also gives me protection against anyone who attempts to produce a product with the same claims as my shopping cart cover patent. But there are limits to that protection.
“Protection” and “claims” are two very important words in the world of intellectual property (IP)/patent law. While I don’t claim to be an expert on patent law, I’ve learned through my business dealings over the years that those simple words carry extraordinary weight. ’Protection,’ however, is partially only as strong as you are. Do you have the intestinal fortitude, so to speak, to endure a lengthy and expensive legal battle? If so, rest assured you are protected with your patent. Unless, of course, the infringing product’s patent claims are decisively different from your own. In that case, you will have a more difficult time defending your claims in court - especially if they aren’t being infringed. Two products may appear similar, but may also be constructed entirely different and claim different attributes. Those claims may hold up in a court of law.
I am often asked by aspiring entrepreneurs with inventions of their own, how I ‘deal’ with the copycat products on the market. Most questions typically take the form of the following, “Do you sue?” “Do they pay you royalties?” “Do you just forge ahead and hope you beat them in market share?” The answer is simple: It depends upon the product, and that product’s patent claims or lack thereof.
Every situation is different. I have made it a company - and personal - priority to sue any person or business infringing on my patents or trademarks. I have had to sue six different companies over the years for either patent or trademark infringement; one company for counterfeiting, and three other companies for their bad business dealings. All of these lawsuits have ended favorably for my company. But I should have prefaced this by saying that I do not take any of these lawsuits lightly.
The process of filing a lawsuit and completing the time-consuming task of ‘discovery’ can take more than a year, and that’s before even going to trial and enduring lengthy litigation. Litigation is unbelievably expensive and unless you are prepared to spend tens of thousands and even hundreds of thousands of dollars to protect your IP, you probably won’t want to go down that path. While many lawsuits are settled out of court, sending a “cease and desist” letter really means absolutely nothing unless you are prepared to follow that letter through to litigation.
When I make the decision to issue a cease and desist letter to an infringing company, I am making the decision to commit months of my time and tens of thousands of my hard-earned dollars to defend my IP.
Many companies opt to pursue other options, such as negotiating a licensing deal with the infringing company. In my personal experience, I have found that infringing companies rarely want to pay innovators, but rather seek to find the fasted ways to cash in on the growing popularity of new ideas. There are three companies in my industry that come to mind immediately, and I often wonder why buyers continue to purchase goods from them, knowing they leach all of their ideas from smaller, usually woman-owned, businesses. I suspect it is because their pricing appears better, not having had to spend the upfront money on research and development or IP.
Another option companies often pursue is to forge ahead and grab as much market share as possible before the competition gets too big and fierce. Some of my competitors (whose products, while similar, don’t technically infringe) have chosen this path. In all honesty, I wish they would simply make the commitment to sue those who infringe on their claims, but they have opted not to. This has made the market tighter than I would like, but it in an interesting way, it has also managed to boost our brand’s image.
Although lawsuits can seem daunting, they can also be extremely useful and quite beneficial when necessary. When deciding to sue or not to sue, please take into consideration the following important factors:
- Is the infringing product exactly like your product’s construction?
- Does the infringing product have a patent?
- If so, what does the patent claim and how do those claims compare to yours?
- Do you have a good IP attorney who is also a litigator? This is important.
- Can you afford to defend your claims (get estimates from your attorney on costs)?
- What will you loose if you do not litigate?
Carefully consider these issues and consult with your IP attorney before making any decisions. You may find that it is simply not in your best interest to sue. On the other hand, you may find it’s time.