Understanding Patent Cease and Desist Letters Patents apply to actual inventions and prevent others from manufacturing, selling, or using a product or process. These protections are granted by the government in exchange for public disclosure of the invention, which can leave creators open to instances of patent infringement. When this occurs, an inventor’s first line of defense is the patent cease and desist letter. This formal demand is sent directly to an alleged infringer and can later be used during litigation to show misconduct was knowing and willful. If you have received a cease-and-desist letter based upon patent infringement, please contact us at Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com What is a Patent Cease and Desist Letter? Once a patent application has been granted, the owner of the patent has exclusive rights over the invention. When these rights are violated, a patent cease and desist letter can be sent to an alleged infringer of these rights. This is typically the first step in defending a patent, and in most cases, it’s also the last necessary step. Cease and desist notices are partially credited with keeping over 97 percent of legal disputes from ever entering the system. Although patent owners are granted certain protections by the U.S. Government, the onus of policing violations still falls upon the patent owner. Any enforcement activities must begin with the IP owner, and in many cases, this can lead directly to litigation. The driving focus behind patent cease and desist letters is to avoid further legal issues, but without professional assistance, these notices may simply be ignored. Every cease and desist letter explains the misconduct that’s occurring and demands that it be ended. By sending one, patent owners create an evidentiary trail that can later be used in court. If you receive a patent cease and desist letter, you have a specified time period to respond. If infringement is obviously taking place, it’s important to cease those actions immediately. Of course, not every claim of patent infringement is cut and dry, so if there’s any confusion as to whether infringement is occurring, it’s important to consult with a patent law firm to understand the patent owner’s demands and the patent owner’s patent claims. What Constitutes Patent Infringement? Patent infringement occurs when someone other than the intellectual property owner sells, offers to sell, uses, or manufactures a patented item or process. This must occur during the duration of protection – typically 20 years – and meet all elements of at least one claim within the patent. Some typical defenses to a patent infringement claim include: Prior Art: Alleged infringers may claim that a patent is invalid due to the existence of prior art. Non-Infringement: If the device at issue does not utilize all elements of a claim, infringement has not taken place. Inequitable Conduct: A patent can be invalidated if the owner acted in bad faith during prosecution. Doctrine of Laches: If a patent owner procrastinates in defending its rights, they could lose the ability to do so. Estoppel: Individuals are prevented from making assertions contrary to prior claims, actions, or established facts. Writing a Patent Cease and Desist Letter Considering the increasing number of design and utility patents granted by the USPTO, there’s little doubt that the frequency of patent cease and desist letters is increasing. It’s important to include pertinent patent law when sending a cease and desist letter. This lets the recipient know that you’re doing more than just “fishing” for potential infringing behavior. In addition to including specific instances where your patent was infringed, you need to explain how the recipient’s behavior constitutes infringement. This is done through a patent’s claims. Whenever you file a patent application, you’re required to list several claims that describe the invention. These explain the scope of your patent and thus dictate the protection provided by the U.S. Patent and Trademark Office. If alleged violations don’t meet the criteria of at least one of the claims, then infringement has not occurred. Parts of a Patent Cease and Desist Letter A well-crafted patent cease and desist letter sent by a patent litigation attorney can bring a quick resolution to a matter. Failing to include appropriate information, though, could result in the notice carrying no legal weight. This is why it’s important to consult with a lawyer. The following are all integral parts of a patent cease and desist letter: Contact information for yourself and the infringer. Demand that all infringing activities end. Demand that infringing activities not be resumed. Patent registration number. Dates and examples of the infringing activities. Additional legal actions that may be taken. Deadline for response (often 10 days). Each of these aspects of a cease and desist letter is geared toward removing all doubt that infringing activities are accidental. At this point, infringers typically acquiesce and end their activities – especially if their misconduct was knowing and willful. Those who engaged in accidental violations usually abide by the requests in these notices as well. Responding to Patent Cease and Desist Letters If you’ve received a patent cease and desist letter claiming infringement, it’s important to thoroughly review the information provided. Keep in mind that this document is not legally binding. Patent trolls send out bad faith cease and desist letters frequently. In doing so, they hope to either stifle competition or extort money from individuals engaged in legitimate conduct. You’re not obligated to respond, but failing to do so could lead to litigation, so clearly, every cease and desist letter should be responded to in writing. If your behavior doesn’t constitute infringement, a patent cease and desist response letter is your opportunity to showcase that fact. In doing so, you may eliminate any further harassment from the alleged patent owner. You’ll also start establishing your own evidentiary trail. This can become useful later if you end up in court. Always keep in mind that cease and desist letters and their responses are simply meant to enforce the law. If you’re engaged in patent infringement, a cease and desist notice should be viewed as an opportunity to end a conflict before further legal action is taken. When Cease and Desist Letters Don’t Work Cease and desist letters are among the most effective tools in the intellectual property world, but there will always be instances when an infringer refuses to cease an infringement. This is why around 4,000 patent infringement cases have been filed yearly in federal courts over the last few years. Unfortunately, this may be your only recourse if a cease and desist letter isn’t effective. If another party is wrongfully claiming that they’re not infringing upon your patent, you’ll have the option to file a complaint to initiate patent litigation in court and have the infringer served. They’ll have time to respond, but if they fail to do so, you may be awarded a default judgment that includes an injunction and monetary compensation. Judgment amounts in patent cases have been trending upwards over the last two decades. One of the most overlooked issues regarding patent cease and desist letters is the possibility of declaratory judgments. The infringer could seek a judgment of non-infringement in a more favorable court the moment they feel litigation is imminent. This could put you on the defensive side, so at times, you may want to consider filing a lawsuit prior to sending a cease and desist letter. The lawsuit can always be dropped later if an acceptable conclusion is reached. A cease-and-desist (C&D) letter typically demands that the recipient stop (cease) doing something now and avoid (desist from) doing it in the future, or risk being sued. The steps you take after receiving a C&D letter can critically impact how the potential dispute affects your business (as discussed in our related IP Update regarding trademark and brand protection). In patent disputes, C&D letters are frequently used to advise the recipient that they are infringing the patent rights of the patent holder and demanding the recipient to stop. Sometimes the patent holder may offer the recipient a license to the patent at issue. A C&D letter may fall across a spectrum of threatening to friendly, depending on the sender, the recipient, and the nature of the allegations/accusations. Steps to Take if You Receive a Patent Cease and Desist Letter If you receive correspondence that you believe is a C&D letter, consider these five steps: Consult an Intellectual Property Lawyer:If you receive a C&D letter for patent infringement, you should consult with an Intellectual Property (IP) lawyer with expertise in patent infringement litigation. Intellectual property law is a highly specialized practice area. It is important to obtain counsel who is familiar with patent litigation to put yourself in the best position moving forward. Patent infringement allegations are often rooted in complex and highly technical facts and can take time to properly investigate. Consulting with an experienced IP lawyer quickly after receiving a C&D letter makes for the best use of the time leading to the sender’s proposed deadline and will set you up to properly consider the allegations, gain an understanding of your risk level, and evaluate the next steps. Make Note of the Deadline:A C&D letter will typically include a deadline for you to respond and confirm your compliance with the demands. A deadline may have been chosen randomly or may be intentional and especially important where there is a risk of fast-approach
