In the article “4 Mistakes Lawyers Make in Negotiating Patent Settlements,” Law360 explores common mistakes attorneys make when working to settle a patent dispute. These include: viewing the case only from their client’s perspective, failing to understand their clients’ industries and goals, and overestimating confidentiality in settlement talks. Another big mistake lawyers make is becoming so focused on the current suit that they fail to consider the potential for further disputes with the same opponent.
“For patent owners, attorneys must consider the risk on an accused infringer designing around the patent-in-suit in a way that either continues to infringe the patent or violates other patents,” says One LLP Partner William O’Brien. “There’s no great solution for that, but you can try to negotiate specific features will constitute infringement and negotiate procedures for dealing with future issues, such as including an arbitration clause.”
In the article, Bill also advises lawyers for patent owners to bear in mind that, once they grant a patent license as part of a settlement, they may no longer be able to obtain lost profits from other infringers. Bill adds, “A partial solution is if the patent owner can license the accused infringer for one defined field of use, it can preserve its own exclusivity in other fields of use.”