Answers to Questions from Tech Transfer Managers and University Executives

1. What is your fee structure?

General Patent does not charge an hourly or daily fee, or bill for expenses. When we agree to manage and finance a patent enforcement campaign, we work on a 100% contingency basis. We accept no money from the university. We cover all out-of-pocket expenses and we engage a law firm to try the patent infringement litigation. We are repaid for the expenses we invested in the case, and we then receive a “success fee” that is a share of the revenue generated by the litigation (awards made by a court, settlements reached with the defendant, and royalties and licensing fees) per an agreed-to formula.

2. What procedure does GPC use to determining whether to take a claim?

We discreetly analyze the university’s claim of patent infringement by reviewing the patent itself for any significant problems with validity and/or enforceability. We then estimate what damages could be recovered through successful patent infringement litigation. From this analysis we make a preliminary determination if a patent enforcement campaign is a viable undertaking for us.

3. What does this evaluation process cost?

We charge nothing to analyze the university’s patent infringement claim.

4. How long will it take to complete your analysis of our business’s patent?

Depending on the amount and quality of the documentation the university provides, preliminary evaluation of your infringement claim (item No. 2 from above) usually takes a few weeks. Upon completion of this evaluation, we may issue a Letter of Intent that details the next set of actions we will take on your behalf.

5. What documentation do you need to conduct your free analysis?

a. U.S. Patent Nos. of the patent(s) you believe has been infringed.

b. File wrapper (the patent prosecution file history), if available. If you do
    not have it, we will order it from the Patent Office, but it will save us time if
    you have it.

c. Description of the allegedly infringing device or method. This could
    include pictures, schematics, drawings, diagrams, technical specifications,
    data sheets or an actual sample of the product.

d. Copies of any correspondence between the university and the alleged infringer.

e. Copies of any license agreement(s) for the infringed patents

6. Does General Patent Corporation have attorneys on staff?

We have an in-house Legal Department that is staffed with experienced patent attorneys and litigators. We have relationships with patent litigation law firms that we bring in as needed for each patent enforcement campaign.  

7. Is GPC a law firm?

No. We have in-house legal staff that analyzes the patent infringement claims that come to us. Our in-house attorneys coordinate the work of the law firms we engage, and they assist with licensing and settlement negotiations.

8. How do you choose a law firm to represent a client?

We select a law firm based on several factors – its reputation, availability, expertise in the patent’s technology, and location, and if there are any conflicts of interest, as well as our experience working with them with other patent owners.

9. If enforcing the patent is not an option, what other options do we have?

Should we determine there is no infringement or that a patent enforcement campaign is not viable, the remaining option is to sell or license the university’s patent. If your institution does not have a Tech Transfer office, General Patent’s patent brokerage subsidiary, IPOfferings, may be able to represent the university in the commercialization of its patent.

10. Will the university be the plaintiff in the litigation? Will the school’s name appear in the Complaint and other legal filings?

Not if the school does not want it to. Through a unique business model, General Patent can enforce the university’s patents, even file patent infringement lawsuits on behalf of the university, but not have the school’s name appear in any of the lawsuit documents.

11. Does General Patent prepare patent applications?

GPC does not file or prosecute patent applications, except for clients. Should the university become a General Patent client, as part of our comprehensive Suite of Services, we may file and prosecute further patent applications including broadening reissues, continuations, continuations-in-part (CIP) and reexaminations should any of these be applicable and appropriate.

12. What if a foreign company is infringing my patent?

If a foreign business manufactures and/or sells a product that is covered by a U.S. patent, but does so outside the U.S., we cannot enforce the patent. However, if a foreign business imports infringing products into the U.S., we can pursue them for patent infringement for products sold in the U.S.

13. What if the university’s patent has expired?

We may still be able to collect past damages for infringement if the patent expired less than six years ago.

14. What if the university’s patent has not yet been issued?

We can only enforce an issued U.S. Patent. However, as soon as the patent is issued, we will take a look at the university’s infringement claim.

15. What if only part of a claim in the Patent is infringed and not the rest?

The whole claim has to be infringed or there is no infringement.

16. What if the university is already in litigation? Can General Patent assist us, or possibly take over the litigation?

We prefer to handle a patent infringement campaign form its inception and manage it through to a successful conclusion. In some instances we will consider stepping in and taking over existing litigation.

17. What determines if a patent has been infringed?

Infringement occurs when every limitation of at least one claim in the patent is found in the allegedly infringing product or process. Once we’ve seen the actual patent and taken a look at the allegedly infringing product or process, we can share if we believe the university’s patent has been infringed – and if we believe we can prove it in court.

18. If I believe a university’s patent has been infringed, should we try to enforce it immediately or wait for damages to accumulate?

You should act immediately and NOT wait for damages to accumulate. Delaying the enforcement of your patent rights could endanger them.

19. Can a business use one of the university’s patents in one of its product or service?

A patent is the right to exclude others from using your patented invention. If a business is using one of the university’s patents without a license, that is patent infringement, and you should contact General Patent about enforcement of the patent.

20. Can another patent infringe one of the university’s patents?

No. A patents cannot infringe another patents. Only products or processes can infringe a patent.

21. Should the university contact a suspected infringer directly, or wait until we have representation?

Contacting a suspected infringer directly could have adverse consequences. We recommend you take no action until you discuss your patent infringement claim with General Patent or an experienced IP attorney.

22. What differentiates General Patent from a law firm?

Since General Patent is not a law firm, we can provide additional services that law firms do not provide. GPC will engage a law firm to litigate the university’s infringement patent lawsuit, so when you chose General Patent you get the services of a competent IP law firm with General Patent managing and financing the entire process. You also have access to the programs in our Suite of Services.

23. How long will it be before the university receives some compensation?

It typically takes from 18 to 24 months for new patent infringement lawsuit to be resolved. It could take longer if the case is large or complex.

24. What is General Patent’s track record?

We measure our success in a straightforward manner. How have we done in terms of producing cash settlements for our clients? Measured on that basis, we have been very successful!