A Cease and Desist letter or a Patent Notice letter can take on many different forms. These letters are written by an attorney on behalf of a party who owns the patent. The letters are sent to alleged infringers of the patent. Patent attorneys are trained to write these patent infringement letters for their clients. It takes a trained eye to be able to see whether someone has actually infringed the claims of a patent. A patent owner is wise to consult an attorney to help them strategize the type and timing of the communication to the alleged infringer right from the very first interaction and try to set the course for reaching the client’s goals.
The client’s goals range can widely from a settlement and reaching a licensing agreement. Sometimes, its not all about the money (sorry Jerry McGuire). Sometimes, the patent holder, just wants the other party to stop what they are doing. With a license agreement, the patent owner would get a royalty on the products or services sold in the marketplace, to more aggressive measures including injunctive relief, seeking damages, and customs/border action. On the one side, licensing usually means allowing the infringer to continue doing what they are doing (likely selling the product or service) but taking a percentage of the profit (for example) and sending that to the patent holder who would be allowing the infringer to make, use, or sell their patented technology. On the other side, the more aggressive action involving litigation takes a lot of careful preparation to assure the patent owner’s patent claims would hold up in court, being certain that the infringer is practicing what is claimed in the patent among others. This preparation is needed in order to prepare for a response, which can be just as aggressive.
Validity and Infringement Opinions
It is important to also review the claims of your patent first to see whether the claims are valid and enforceable in today’s laws. Working with an attorney, you can get what’s called a validity opinion – this will analyze case law and determine whether your claims would be upheld by a judge/jury given the laws as they are today. Secondly, an infringement opinion will help you determine whether and to what degree the alleged infringer is actually making, using, selling, or importing your patented claims. These two opinions are vital to moving ahead with confidence in asserting your patent rights on a third party.
So, what are the pros and cons of sending a Cease & Desist letter?
- Notice: Puts the infringing party on notice! The notice is kind of obvious, but it helps courts understand definitively when one of the parties were made aware of the situation.
- Big Damages: If the alleged infringer continues the infringing activity after receiving notice – this could be BIG trouble for them if they are found liable. This is called “willful infringement”.
- Settlement: The letter could surprise the other party who may be innocently infringing. The other party may then be scared of litigation (rightfully so) and decide to settle with the patent owner – this is the best situation for all involved.
- Efficient: Lower cost than litigation, quick resolution, and no one gets hurt.
- First Move: The alleged infringer could try to beat you to the court after receiving the letter. Often times this is through a “declaratory judgment” (DJ) motion. This DJ action could result in a ruling in favor of the alleged infringer and they may have a leg up on your because they made the first move
- Venue: Along with bringing the DJ action is the ability to force the patent owner to the alleged infringer’s turf! This could mean having to fly across the country to defend a DJ action.
- Post-Grant Actions: The alleged infringer could “stay” or put on hold a court action by filing an Inter Partes Review (IPR) or Post Grant Review (PGR) on the patent owner’s patent – seeking to have the USPTO re-evaluate the patent claims. This could mean having to go defend the patent first, before making any headway on the civil front.
If you have questions about patent infringement, either on the plaintiff side or defense side, we can help you. Please visit www.boldip.com or call 800-849-1913 and we would be happy to discuss your case at no charge. You may schedule your free 30-minute consultation today by using this link: www.calendly.com/bold-ip.