For those familiar with patent litigation, the receipt of a patent “cease and desist” letter is the trigger for a series of unfortunate events in a familiar chain. For those unfamiliar with patent litigation, however, a patent cease and desist letter can be equal parts frustrating, frightening, and infuriating.
Patent law is often a foreign concept to many and is not always intuitive. But it need not be feared. Those familiar with the process know that some basic analysis and investigation can answer many questions. In addition, by doing a little ground work and analysis on your own, those unfamiliar with patent law can often lessen the work of patent counsel they do hire (reducing the amount of money they may need to spend).
So, you’ve received a patent cease and desist letter. How should you handle it? (This post is Part 1 in a two-part series. Click here for Part 2.)
Don’t ignore the letter
This is the most important point that you can take away from this post. Do not ever ignore a patent cease and desist letter. Such letters should always be viewed as an alert to possible litigation.
They may not directly accuse you of infringement — because doing so would allow you to go to court and sue them in a jurisdiction of your choosing for a finding that you do not infringe. Instead, the letter may “helpfully” note that you may be using infringing technology and that a license is available to cover your actions. But do not be fooled. Although the letter may not come out and say that you are committing patent infringement, in most cases, if a patent owner has gone through the trouble of identifying you and sending you a letter, patent litigation is on the patent owner’s mind.
Ignoring the letter will not make the threat, or the party making the threat, go away. And perhaps more importantly, under patent law, once you have been given notice that you are potentially infringing another’s patent rights, you have an affirmative duty to investigate those claims. This means that by ignoring the letter and carrying on with your business, you are breaching a duty under the patent law. Failure to investigate claims of possible patent infringement could result in you being found a willful infringer in later litigation (which could result in a tripling of your damages).
So, first and foremost, if you receive a patent cease and desist letter, investigate the claims and preferably at least talk to a patent attorney about the issue.
Assess the claims being made
Read the letter. It sounds simple, but patent law language can be somewhat confusing. Read the letter several times and begin to assess what technology is at issue and what you are being asked to stop doing.
Typically the drafters of patent cease and desist letters use fuzzy or loose language to describe the technology being accused of infringement. Do your best to decipher who is involved, what patents they are asserting, and what technology is at issue.
Your goal, after receiving a cease and desist letter, should be to identify the following information:
- Identify the entity threatening you
- Identify any patent numbers that are being referenced in the letter
- And, to the best of your ability, determine what technology is being accused of infringement
In my next post, I’ll go into more detail about how you can investigate the infringement claim and gather more facts about technology in question.
Jason Schwent is a partner in Thompson Coburn’s Intellectual Property group. He is the editorial director of the Patent Billy Goat. You can find Jason on Google+, Twitter, and reach him at (314) 552-6291 or firstname.lastname@example.org.