IP Litigation
Expert-defined terms from the Specialist Certification in Intellectual Property Law and Biotechnology course at London School of Business and Administration. Free to read, free to share, paired with a globally recognised certification pathway.
Adverse Possession #
A legal doctrine that allows a person to gain ownership of someone else's property if they have been openly, notoriously, exclusively, and continuously using the property for a certain period of time, despite not having legal title. In the context of IP litigation, adverse possession may be relevant in disputes over ownership of intellectual property, particularly in situations where there has been long-term use or possession of the property without proper registration or documentation.
Anton Piller Order #
A type of court order that allows a party to enter another party's premises and seize evidence that is at risk of being destroyed or otherwise concealed. Named after the case of Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55, these orders are typically used in intellectual property cases where there is a risk of irreparable harm or damage if the evidence is not preserved.
Bolar Provision #
A legal provision that allows generic drug manufacturers to conduct research and development activities related to regulatory approval for a patented drug, without infringing on the patent. The provision is named after the case of Roche Products Inc v Bolar Pharmaceutical Co Inc 733 F2d 858 (Fed Cir 1984), and is intended to promote competition and lower drug prices by allowing generic manufacturers to enter the market more quickly.
Cease and Desist Letter #
A formal letter sent by a party to another party, demanding that they stop engaging in a particular activity that is alleged to be infringing on the party's intellectual property rights. Cease and desist letters are often used as a first step in resolving intellectual property disputes, and may be followed by legal action if the infringing party does not comply with the demand.
Compulsory License #
A legal mechanism that allows a party to use another party's intellectual property without their permission, in exchange for the payment of a royalty or fee. Compulsory licenses are typically used in situations where the patent holder has failed to make the patented technology available on reasonable terms, or where there is a public interest in making the technology available.
Contributory Infringement #
A legal doctrine that holds a party liable for infringing on another party's intellectual property rights if they intentionally induce or contribute to the infringing activity. Contributory infringement is typically used in cases where a party provides materials or services that are used to commit the infringing activity, such as selling components of a patented invention with the knowledge that they will be used to make the invention without the patent holder's permission.
Damages #
A legal remedy that compensates a party for the harm they have suffered as a result of another party's violation of their intellectual property rights. Damages may take the form of actual damages, which are intended to compensate the party for their actual losses, or statutory damages, which are set by law and do not require proof of actual damages.
Declaratory Judgment #
A legal action brought by a party seeking a court's determination of their rights or obligations in a dispute, without waiting for the other party to take legal action. Declaratory judgments are often used in intellectual property cases where a party is threatened with legal action for alleged infringement, but has not yet been sued.
Design Patent #
A legal protection for the visual ornamental characteristics of a product, as opposed to its functional aspects. Design patents are typically used to protect the appearance of a product, such as its shape, configuration, or decorative features.
Direct Infringement #
A legal doctrine that holds a party liable for infringing on another party's intellectual property rights if they directly violate the exclusive rights granted to the intellectual property owner. Direct infringement may take the form of making, using, selling, or offering for sale a patented invention without the patent holder's permission, or copying a protected work without the copyright owner's permission.
Doctrine of Equivalents #
A legal doctrine that allows a patent holder to assert infringement against a party whose product or process performs substantially the same function, in substantially the same way, and with substantially the same result as the patented invention, even if the product or process does not literally infringe on the patent.
Fair Use #
A legal doctrine that permits the use of copyrighted material without the copyright owner's permission in certain limited circumstances, such as for purposes of criticism, commentary, news reporting, teaching, scholarship, or research. Fair use is a complex legal standard that requires a case-by-case analysis of various factors, including the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use on the market for the copyrighted work.
False Marking #
A legal doctrine that holds a party liable for falsely marking a product with a patent number, or for making false representations about the scope or validity of a patent. False marking may be intentional or unintentional, and may result in liability for damages or injunctive relief.
Federal Circuit #
The federal appellate court responsible for hearing appeals in intellectual property cases, including patent, trademark, and copyright cases. The Federal Circuit has exclusive jurisdiction over patent cases, and its decisions are binding on all federal district courts.
First #
Sale Doctrine: A legal doctrine that permits the owner of a lawfully made copy of a copyrighted work to sell, lease, or otherwise dispose of the copy without the copyright owner's permission. The first-sale doctrine limits the copyright owner's exclusive right to distribute the work, and is intended to promote the free flow of goods in the marketplace.
Generic Drug #
A drug that is equivalent to a brand-name drug in terms of active ingredients, dosage, strength, route of administration, quality, performance, and intended use, but is produced and sold under a different name. Generic drugs are typically less expensive than brand-name drugs, and are subject to regulatory approval by the relevant government agency.
Injunction #
A legal remedy that orders a party to stop engaging in a particular activity, typically because the activity is causing irreparable harm or because there is a risk of irreparable harm if the activity is not stopped. Injunctions are typically used in intellectual property cases where damages would be an inadequate remedy, such as cases involving trade secrets or trademark infringement.
Infringement #
The unauthorized use or violation of another party's intellectual property rights, such as patents, trademarks, copyrights, or trade secrets. Infringement may take the form of direct infringement, contributory infringement, or inducement, and may result in liability for damages or injunctive relief.
Irreparable Harm #
A legal standard that requires a party to demonstrate that they will suffer harm that cannot be fully compensated or remedied by monetary damages. Irreparable harm is typically required to obtain an injunction or other equitable relief, and may be demonstrated by evidence of lost profits, lost market share, or other economic harms.
Joint Infringement #
A legal doctrine that holds multiple parties liable for infringing on another party's intellectual property rights if their combined actions constitute infringement, even if no single party has engaged in all of the infringing acts. Joint infringement is typically used in patent cases where multiple parties are involved in the production, distribution, or sale of a patented invention.
Laches #
A legal doctrine that bars a party from asserting their rights or seeking relief if they have delayed unreasonably in doing so, and if the delay has caused prejudice to the other party. Laches is typically used as a defense in intellectual property cases where the plaintiff has delayed in bringing their claim, and the defendant has relied on the delay to their detriment.
License #
A legal agreement that grants a party the right to use another party's intellectual property, typically in exchange for the payment of a royalty or fee. Licenses may be exclusive or non-exclusive, and may be limited in scope or duration.
Markman Hearing #
A pretrial hearing in a patent case where the court determines the meaning and scope of the patent's claims. Markman hearings are named after the case of Markman v Westview Instruments, Inc 517 US 370 (1996), which established the court's role in interpreting patent claims.
Non #
Obviousness: A legal standard that requires a patent to be novel and non-obvious in order
Adverse Possession #
A legal principle that allows a person to claim ownership of property owned by someone else, if they have openly, notoriously, exclusively, and continuously possessed the property for a certain period of time. In the context of IP litigation, adverse possession may be relevant in disputes over ownership of intellectual property, such as patents or trademarks.
Anticipation #
In patent law, anticipation refers to the situation where an invention is not considered novel because it was previously disclosed or patented by another. Anticipation can be used as a defense in patent infringement lawsuits.
Claim Construction #
The process of interpreting and defining the scope of the claims in a patent. Claim construction is a critical step in patent litigation, as it determines the boundaries of the patent owner's exclusive rights.
Copyright Misuse #
A defense to copyright infringement, copyright misuse occurs when the copyright owner has engaged in anticompetitive behavior or has exceeded the scope of their copyright protection. An example of copyright misuse is "tying," where a copyright owner conditions the sale of a product on the purchase of another product.
Damages #
The monetary compensation awarded to a successful plaintiff in an IP lawsuit. There are several types of damages available in IP cases, including actual damages, statutory damages, and punitive damages.
Design Patent #
A type of patent that covers the ornamental design of a product. Design patents are often used to protect the visual appearance of products, such as the shape and configuration of a consumer product.
Doctrine of Equivalents #
A legal doctrine used in patent infringement cases to determine whether an accused product or process infringes on a patented invention. The doctrine of equivalents allows a patent owner to protect their invention from infringement by products or processes that are not identical to the patented invention but are equivalent in function and purpose.
Electronic Discovery (e #
Discovery): The process of identifying, collecting, and producing electronically stored information (ESI) in response to a request for production in a legal case. E-discovery is an important aspect of IP litigation, as it often involves the production of large volumes of ESI, such as emails, documents, and other digital files.
False Marking #
The act of labeling or advertising a product with a patent number that does not cover that product. False marking is a violation of the patent laws and can result in fines and other penalties.
Federal Circuit #
The federal court of appeals that has jurisdiction over patent cases and other specialized areas of law. The Federal Circuit is located in Washington, D.C. and hears appeals from the district courts and the Patent Trial and Appeal Board (PTAB).
Infringement #
The unauthorized use, sale, or manufacture of a patented invention, trademark, or copyrighted work. Infringement is a violation of intellectual property laws and can result in legal action.
Inter Partes Review (IPR) #
A procedure for challenging the validity of a patent before the Patent Trial and Appeal Board (PTAB). IPRs are a type of post-grant review and are used to challenge patents that have already been granted.
Laches #
A legal defense that can be used to bar a claim if the plaintiff has delayed bringing the claim for an unreasonable amount of time. Laches is often raised as a defense in IP cases, where the defendant argues that the plaintiff has waited too long to assert their rights.
Markman Hearing #
A pretrial hearing in which the judge construes the claims of a patent. Markman hearings are named after the 1996 Supreme Court case Markman v. Westview Instruments, Inc., which held that claim construction is a question of law for the judge, not a question of fact for the jury.
Non #
Obviousness: A requirement for patentability, non-obviousness means that an invention cannot be obvious to a person having ordinary skill in the art (PHOSITA) at the time the invention was made. Non-obviousness is often a key issue in patent infringement lawsuits.
Patent Eligibility #
A requirement for patentability, patent eligibility means that an invention must fall within one of the categories of patentable subject matter set forth in the patent laws. These categories include processes, machines, manufactures, and compositions of matter.
Patent Trial and Appeal Board (PTAB) #
An administrative body within the USPTO that hears and decides appeals from patent examiners, as well as post-grant review proceedings such as inter partes reviews (IPRs) and post-grant reviews (PGRs).
Permanent Injunction #
A court order that prohibits a party from engaging in certain conduct, usually permanently. In IP cases, permanent injunctions are often sought by patent owners to prevent infringement of their patented inventions.
Plaintiff #
The party who brings a lawsuit. In IP cases, the plaintiff is usually the owner of the intellectual property rights at issue.
Preliminary Injunction #
A court order that prohibits a party from engaging in certain conduct on a temporary basis, usually until a trial can be held. In IP cases, preliminary injunctions are often sought by patent owners to prevent infringement of their patented inventions while the lawsuit is ongoing.
Prior Art #
Information that is publicly available before a patent application is filed and that can be used to assess the novelty and non-obviousness of an invention. Prior art can include publications, patents, and other publicly available information.
Remedies #
The legal relief available to a successful plaintiff in an IP lawsuit. Remedies in IP cases can include damages, injunctions, and attorneys' fees.
Statute of Limitations #
A time limit for bringing a legal claim. In IP cases, the statute of limitations is usually three years from the date the infringement occurred.
Trade Dress #
The visual appearance of a product or its packaging that serves to identify the source of the product. Trade dress is a type of trademark protection and can include the shape, color, and design of a product or its packaging.
Trademark #
A word, phrase, symbol, or design that identifies and distinguishes the source of a product or service. Trademarks are a type of intellectual property protection and can be registered with the USPTO.
Trademark Dilution #
The weakening or tarnishing of a famous trademark by the unauthorized use of the trademark by another party. Trademark dilution is a violation of trademark laws and can result in legal action.
Utter Confusion #
A legal standard used to determine whether there is a likelihood of confusion between two trademarks. Utter confusion exists when a reasonable consumer is likely to be confused as to the source, sponsorship, or affiliation of the products or services offered under the trademarks.
Willful Infringement #
The deliberate or intentional violation of another party's intellectual property rights. Willful infringement can result in enhanced damages, such as treble damages or attorneys' fees, in IP cases.
Work Made for Hire #
A work created by an employee within the scope of their employment, or a work specially commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. The employer or other person for whom the work was prepared is considered the author of the work for copyright purposes.