Patent Infringement Legal Advice: How to Protect Your Rights in New York

Infringement occurs when someone, without permission, makes, uses, sells, offers to sell, or imports into the United States any patented invention during the term of the patent. The Patent Act imposes liability on the direct infringer and, under certain circumstances, on parties who contribute to or actively induce infringement. Direct infringement is the most straightforward form: the accused product or method meets every element of a valid patent claim. Contributory infringement and inducement impose liability on parties who knowingly facilitate or encourage infringement, even if they do not themselves practice the invention.

Courts apply a two-step analysis: first, they construe the patent claims to determine their scope, and, second, they compare the accused product or process to the construed claims. This comparison is both literal and equitable; courts may find infringement under the doctrine of equivalents if the accused device performs substantially the same function in substantially the same way to achieve substantially the same result. The burden of proof in patent litigation is clear and convincing evidence, a higher standard than the preponderance standard used in many other civil disputes. Patent claim construction is often the most contentious issue in infringement litigation, as the interpretation of claim language directly determines what products or processes fall within the scope of protection.

Patent infringement cases are filed in the United States District Courts, and in New York, that would be the U.S. District Court for the Southern District of New York or the Eastern District of New York, depending on venue and personal jurisdiction. Venue in patent cases is proper in any district where the defendant resides or has committed acts of infringement or has a regular and established place of business. From a practitioner's perspective, venue selection can affect case management, local patent bar expertise, and scheduling. The timing of when you file, and whether you have documented the infringement before filing, can affect the court's ability to grant preliminary relief and can shape the scope of damages you may recover. Courts in the Southern District of New York handle a high volume of patent cases, and delaying the filing of verified documentation can complicate early motion practice and limit your ability to obtain preliminary relief.

The International Trade Commission (ITC) has jurisdiction over patent infringement cases involving imported products. An ITC investigation can result in an exclusion order that bars infringing goods from entering the United States, which can be a powerful remedy. ITC proceedings are faster than district court litigation and do not require proof of monetary damages. However, the ITC cannot award damages; it can only order exclusion or cease-and-desist relief. Many patent owners pursue parallel claims in both federal court and the ITC to maximize available remedies.

Courts may award three categories of relief: injunctive relief (an order prohibiting further infringement), compensatory damages (including lost profits or a reasonable royalty), and, in cases of willful infringement, enhanced damages up to treble the actual damages. Willfulness requires proof that the infringer acted despite a known risk of infringement; this often turns on whether the infringer obtained a legal opinion on non-infringement or invalidity. Injunctive relief is not automatic; courts balance factors such as irreparable harm, inadequacy of damages, balance of hardships, and the public interest. In practice, patent disputes rarely fit a single legal formula, and courts weigh these factors differently depending on the evidentiary record and the technology at issue. Damages are calculated either as lost profits (if you can prove causation and market share) or as a reasonable royalty (a hypothetical license fee the parties would have negotiated). Documenting your sales, market position, and the infringer's sales volume early in the dispute can strengthen your damages case.

Consider filing suit when you have documented evidence of unauthorized use, when the scale of infringing activity justifies the cost of litigation, and when you have a reasonable, good-faith basis to believe your patent is both valid and infringed. Patent litigation is expensive and time-consuming; discovery can last 18 months or longer, and trial preparation requires expert testimony on claim construction, infringement, and validity. Before filing, evaluate the strength of your patent by considering whether it has been challenged in post-grant proceedings and whether the patent claims are clearly drafted. Preserve evidence of the infringement, including product samples, marketing materials, and sales data. Consider whether the infringer is solvent and whether a judgment would be collectible. These strategic considerations will help you determine whether litigation is the appropriate course of action or whether negotiation, licensing, or other alternative dispute resolution may be more efficient.

Document your patent's development, your commercialization efforts, and any instances of suspected infringement. Maintain records of your sales, market share, and the infringer's activities; these records become critical evidence in damages calculations. Monitor the market for competing products and services that may infringe your patent. If you discover infringement, send a cease-and-desist letter that clearly identifies the patent, the infringing product or method, and your request for cessation. This letter serves multiple purposes: it notifies the infringer of your patent rights, it can support a claim of willfulness if the infringer continues after notice, and it often opens dialogue for licensing or settlement. Consult with patent counsel early to evaluate whether your patent is enforceable, whether the accused activity truly infringes, and what remedies are available.