Did You Receive A Letter Demanding Patent License Fees?

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A Check-List for GCs, Execs and Your Patent Counsel

Letters demanding patent license fees are often sent to CEOs, CTOs, GCs or other senior executives. Prompt involvement of patent counsel is essential. They can advise on how to evaluate the demand and your company’s exposure, while protecting information under attorney client privilege.

RPG Law Group uses check-lists similar to that below to take a staged, efficient approach to evaluating and responding to such demands.  We welcome the opportunity to discuss how this approach may benefit your particular facts, circumstances, and technologies involved.

1.      Involve counsel in internal record gathering, related communications and evaluations of which of your products are alleged to infringe;

2.      Was the notice specific or general in its infringement assertion?

3.       Determine and exploit any major mismatch between the patent claims and the accused product for potential summary resolution;

4.      Consider whether third-party indemnity/assistance is available;

5.      Investigate the enforcement history of the patent and assess risk of preliminary injunction against the accused product;

6.      Review your own patent portfolio for potential counterclaims against patent owner;

7.      Research positive effect of relevant standard setting organization intellectual property policies related to the patent;

8.      Determine and exploit patent scope surrendered during prosecution  or later (estoppel);

9.      Investigate whether the patent owner’s publications or commercial activities have invalidated the patent;

10.  Research prior art for invalidity or leverage in potential negotiations or defense

If resolution through the above steps is unsuccessful or unlikely, consider USPTO and Federal Court proceedings.

This post is informational only and should not be considered legal advice.

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