An Overview of Patent Assertion

The terminology surrounding patents can be confusing or, even, somewhat counterintuitive. Getting a patent approved with the U.S. Patent and Trademark Office (USPTO) is referred to as patent “prosecution,” although there is no criminal or civil wrong. When someone or some entity actually takes an (alleged) action that infringes on an existing patent or patent application, the patentee takes an action known as “patent assertion,” which this blog will explore. 

Patent Assertion Definition

Patent assertion is, essentially, a communication between a patentee and the party it believes is infringing on an existing patent or application. It can come in the form of a letter or email; it has many similarities to cease-and-desist letters. By itself, a patent assertion does not formally begin a lawsuit against anyone.

Instead, a patentee generally hopes to simply receive compensation for someone else’s use of the patent. The onus is on a patent owner to identify those who are infringing on existing patents and take steps to preserve the existing IP rights. This declaration means the alleged infringer is on notice. 

Possible Remedies

The first step for any party that expects to be involved in litigation associated with patent infringement must take affirmative steps to preserve pertinent information related to the case. This is statutorily required. 

Alleged infringers who receive a patent assertion letter often contact the patentee directly. Sometimes, a misunderstanding is to blame for the dispute. Whether or not that’s the case in your situation, direct communication can smooth things over and resolve the conflict in an efficient way that keeps the matter out of court. 

An exceedingly common way that patentees and infringers settle is by instituting “stick licensing” for the infringer, which is usually the original goal of patentees. This involves the infringer compensating the patentee for past and future use of the patent. Payments can come yearly or quarterly through the lifetime of the patent. 

Another option is for the alleged infringer to begin a lawsuit by asking for a declaratory judgment action by the court. A successful declaratory judgment action would mean that either infringement is not occurring OR the claims made by the patentee are unenforceable or invalid. 


Patent assertion cases are heavily fact-dependent. Handling such a case (on either side of the dispute) without legal counsel is not wise. Van Court & Aldridge is prepared to provide you with consultative services related to asserting patents and defending against patent infringement claims. The best way to get started with our firm to discuss your options is to fill out a contact form here.

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Van Court & Aldridge LLP

Van Court & Aldridge LLP is a boutique patent law firm that provides a wide range of patent-related legal services.

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