How do lawyers at organisations like IBM or Microsoft detect possible patent infringement situations?

How do lawyers at organisations like IBM or Microsoft detect possible patent infringement situations?

For example, IBM has over 20K patents published every year. Now most are versions of the same spec but with inscrutable minor differences. So how do their teams detect patents that may infringe on IBM IP? Is it through serendipity, or do they employ contractors that get paid for such detection?

Strategies vary depending on the Organisation. They can take one of 2 approaches to IP enforcement or a mixture:

  1. Defensive
  2. Offensive

If defensive then the organisation will take action once threatened by another organisation for infringement or to improve a bargaining position during negotiations. Surprisingly, the defensive position is a very common strategy in large organisations. Perhaps it is because it costs a lot to litigate and takes a lot of resources to seek out infringement actively and it also can distract an organisation from its primary business.

The offensive position is most often adopted where an organisation has a monopoly across a whole industry. Amazon’s 1-Click patent is an example of this for online shopping carts. Such an organisation actively looks for infringers in any competitors or even people employing the same technology and actively try to get them to license the technology. If they meet with opposition to licensing, they take action by way of litigation for infringement.

Mark Warburton About the author

The Intellectual Property Guru. His determination to protect innovation stems from a family legacy in which his grandfather, a genius inventor, had his innovations stolen and patented by someone he trusted, which led to his grandfather dying a pauper on a park bench. Mark is an international award winning lawyer and patent attorney and 3-time published author. His prowess in the court room sees him winning cases that others thought were unwinnable. Mark’s passion for protecting intellectual property shines through in his pro-bono legal mentoring, proactive legal workshops and 1-2-1 work with clients.