Before filing a patent claim, pull your patent grant, ownership and license papers, written infringement mapping, product evidence, notice history, and financial records. A patent claim is a formal demand for compensation for unauthorized use of an invention covered by a patent. Missing papers slow review and weaken settlement talks. Use this checklist to assemble a complete file before you contact an administrator, agency, or court.
Official resources:
- Read the official notice from Uspto — Use this primary source to verify the official announcement.
- Read the official notice from Uscourts — Use this primary source to verify the official announcement.
Table of Contents
- Prove You Have the Right to File
- Map the Infringement in Writing
- Preserve Proof of How the Product Works
- Pull History, Notices, and Money Records
- Add Extra Papers for a Defense Department Claim
Prove You Have the Right to File
Confirm and document ownership first. The U.S. Patent and Trademark Office explains in its USPTO ownership guidance that only the owner or exclusive licensee has standing to sue.
Pull the patent grant and every assignment, license, joint-ownership agreement, and security interest. Record assignments with the USPTO under 37 CFR Part 3. The Office states that recordation gives public legal notice of ownership, while recordation alone does not decide chain-of-title effect.
- Patent grant and continuations
- Signed assignments and license agreements
- Joint-ownership and security-interest documents
- USPTO recordation receipts
Map the Infringement in Writing
Create a written chart that maps each asserted claim limitation to the accused product or process. Cornell Legal Information Institute notes in the Federal Rule 11 text that filings certify factual contentions have evidentiary support after reasonable inquiry.
Work limitation by limitation, not product by product. For each element, cite the manual page, photo, test result, or code that shows it.
Preserve Proof of How the Product Works
Keep the accused product, purchase records, advertisements, manuals, and dated test photos or samples. The U.S.
District Court for the Northern District of California requires in its Northern District patent rules early production of documents showing operation of each accused element and related communications. Store originals and stamp each item with date and source. Do not rely on memory or a website that may change.
Pull History, Notices, and Money Records
Collect prior licenses, demand or notice letters, marking evidence, and the patent file and prosecution history. Troutman Pepper Locke reports that damages, willfulness, priority, and claim scope turn on that paper trail.
Quantify harm early with sales, profit, royalty, and cost records. Cornell Legal Information Institute explains in the Section 284 damages law that the law awards no less than a reasonable royalty plus interest and costs, allows expert testimony, and permits up to triple damages.
- Past licenses and royalty rates
- Notice letters and delivery receipts
- Product marking photos
- Prosecution history and prior-art citations
- Sales, profit, and cost spreadsheets
Add Extra Papers for a Defense Department Claim
For an administrative patent claim against the U.S. Department of Defense, put the claim in writing. Cornell Legal Information Institute states that 48 C.F.R.
section 227.7004 requires an infringement allegation, express or implied compensation request, cited patents, and a designation identifying the infringing item or process. Name the contract, base, or program where you saw the item. Identify model numbers and dates of use so the agency can locate the accused item or process.