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Francelina M. Perdomo Klukosky, Esq.

Manhattan, NY:  (212) 980-7206 

Patent Litigation

Patent Litigation Lawyer NYC - Francelina Perdomo - Perdomo Law

Patent Litigation Lawyer NYC - Francelina Perdomo - Perdomo Law
Contact Francelina Perdomo, Patent Litigation Lawyer in Manhattan NY

Francelina M. Perdomo Klukosky, Esq.


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NYC Patent Litigation Law Firm, Perdomo Law, Conveniently Located in Manhattan, New York City, NY

Let us help you defend your rights!

Patent litigation is the legal procedure used to enforce patent rights. A patent owner who thinks their patent is infringed has the legal remedy of suing for patent infringement in United States Federal Courts (this discussion applies to United States patents only).

Any discussion of patent litigation must first address whether we are talking about a patent owner who wants to enforce their patent rights or someone who has been accused of patent infringement.
So this discussion has two parts. 
  • Part 1 is a discussion of the options available to a patent owner who thinks their patent claims are infringed.
  • Part 2 is a discussion of someone who is accused of patent infringement and how to defend against this accusation. 
What is Patent Infringement?

First, let’s define a patent. A patent is a form of intellectual property that is granted by the federal government to anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” A patent application must include a “specification” that includes a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains” to make and use it. The specification must include one or more claims “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 
  • When a complete patent application is filed with a specification, drawings (if necessary), and one or more claims, the application is examined (reviewed) by a patent examiner. If the examiner approves the patent application, the patent and the approved claims are granted. This is also referred to as being issued. 
  • Patent Infringement occurs when someone, without authorization, makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent.
  • A patent owner (of an issued patent), who believes the claims are being infringed by someone else, has a number of options, but ultimately a patent owner has a right to bring a lawsuit in federal court to stop an infringer or to obtain money damages.
Monitor Your Markets and Competitors for Infringing Activity

A patent owner (called the “patentee”) should monitor the market and their competitors for infringing activity. If an infringement is detected, the patentee should take action within a reasonable time frame. Further commercial litigation may be required should protecting your intellectual property exceed patents. Don’t let your patent go to waste.
Part 1 – Someone is Infringing My Patent. What Can I Do?
NYC Patent Litigation Law Firm, Perdomo Law, Conveniently Located in Manhattan New York, NY 10007
Steps Short of a Lawsuit

We typically advise clients to send a “cease-and-desist” letter to an alleged infringer. The letter may include detailed allegations of the infringement, or it may be very brief and to the point. The letter should make a demand, which normally will be an insistence that the other party stops the infringing activity, or that they take out a license and pay royalties to the patent owner. Even if the other party completely ignores such a letter, it establishes certain rights for the sender, and in some cases, it may start a clock on the calculation of infringement damages.

Non-lawyers should not attempt to send a cease-and-desist letter themselves. This type of letter is a legal document, that establishes legal rights for the patent owner and the recipient, and the drafting of it should be assigned to experienced patent litigators. We can help you with a cease-and-desist letter. In addition, having a law firm send the letter to a patent litigation department will put a potential infringer on notice that the patentee has likely engaged a firm capable of litigating the matter.
Moreover, there are potential risks involved with a cease-and-desist letter that an experienced lawyer can help you avoid. A person receiving a cease-and-desist letter may be able to file a lawsuit before you can, called a “Declaratory Judgment Action,” seeking to have your patent declared invalid by a court. A poorly drafted cease-and-desist letter may be more likely to invite a Declaratory Judgment Action. This kind of lawsuit takes significant control of the situation away from the patentee. For example, a patentee may not be ready, for any number of reasons, to begin litigation. 

If the other side responds to a cease-and-desist letter, there may be an opening for negotiation. The other party may not want to litigate, for any number of reasons, for example, that they don’t think they can win, that the market does not justify the expense and risk of a trial, or that it is a better business decision to get a license and pay a royalty. We can help you with this kind of negotiation with an accused infringer.

Filing a Lawsuit

The ultimate legal remedy for patent infringement is filing a lawsuit. If an alleged infringer does not respond to a cease-and-desist letter or other contact, this is your only option. In some cases, a patentee may make a strategic decision to skip the step of sending a cease-and-desist letter and file a lawsuit as their first step in stopping an infringement.

Patent infringement lawsuits must be filed in a Federal Court and are complex proceedings in any circumstance. We are here to help you navigate the process and get a resolution as quickly and cost-effectively as possible.

Part 2. I Have Been Accused of Patent Infringement. What Should I Do?

Did You Receive A Cease-And-Desist Letter?

A patentee may send a cease-and-desist letter to alleged infringers, advising them to stop infringing or to take out a license to the patent. 

You are under no legal obligation to respond to a cease-and-desist letter. So one option is to ignore it. There may be good reasons to engage in a negotiation with the other side. Another option is to preemptively file a lawsuit against the patent owner called a “Declaratory Judgment Action” that asks a court to declare a patent invalid or not infringed. 

Even if your first thought is to ignore a cease-and-desist letter, you should discuss the letter and a strategy for responding (or not responding) with experienced attorneys. An experienced firm, such as CPBF, will take into consideration all relevant factors, including your business situation, the quality of the patent being asserted, and the alleged infringement. We will advise you on your options and recommend a course of action.

Did You Receive A Notice Telling You That You Have Been Sued?

Patent infringement lawsuits must be brought to Federal Court, so you may have received a notice or summons and complaint that you are being sued. A key point if this happens is that you should contact an experienced patent litigation firm such as CPBF immediately to address the situation. Do not ignore this. Ignoring a summons and complaint will probably result in a default judgment against you, which will likely be costly.

We can assess your situation and recommend the most appropriate course of action for your business situation. This may include seeking a prompt settlement or raising various defenses. The two most common defenses are that you are not infringing the claims or that the patent is invalid. 

In a non-infringement defense, you will argue that your product or process is outside the scope of the issued patent claims. 

In an invalidity defense, you will argue that the patent should never have been granted in the first place, so it is invalid. There are several grounds of invalidity, including that the patent is anticipated or obvious over prior art, or that the patent specification or claims do not meet the written description requirement. For example, the claims must be “definite” (clear and understood by a person of skill in the art), and “enabled” (which means that the patent method can be practiced without undue experimentation).

Inter-partes Review- An inter-partes review (IPR) is an administrative procedure at the USPTO for challenging the validity of an issued patent, alleging that the patent is obvious or anticipated. This is an important option for accused patent infringers, as an additional avenue to challenge the validity of a patent. We can help you decide if this is right for you, and we can prosecute an IPR for you at the USPTO. 
Reviewing Existing Business Needs and Litigation Support

Existing Business Needs and Litigation Support Package

Established businesses also have legal needs. Success can make a company more vulnerable to competition and litigation. Busy schedules can lead to mistakes. Francelina M. Perdomo Klukosky can look over contracts, goals, and procedures to see the details the people involved in the work may have overlooked. Our firm can assist with:
  • Review existing contracts, provide comments, and redraft for improvement
  • Provide opinion letters regarding contract enforcement 
  • Explore out-of-court settlement options for existing disputes
  • Create a litigation plan for potential and existing disputes
Contact Francelina Perdomo, Patent Litigation Lawyer in Manhattan NY

Do You Have A Case? Contact NYC Patent Litigation Attorney Francelina M. Perdomo Klukosky for a Case Assessment

Perdomo Law is your legal solution for protecting your rights through patent litigation. If needed, we can help you with a budget for filing a lawsuit. Bringing a patent litigation action will typically cost at least $500,000 and can easily exceed $1M. So this is a significant business investment. If this exceeds your ability to pay, there may be financing options available. We can help you with these options. 


Please contact us for a case assessment.

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