Patent Infringement Litigation: Risks of Notifying the Infringer Before Filing a Lawsuit

 

           In “Patent Litigation – Four Steps to Patent Royalties,” the author suggests that after collecting evidence of patent infringement, the patent owner should “notify the infringer” before filing suit, because they “may begin to negotiate right away.” Not so fast. You may be about to have a suit filed against you in a court chosen by the defendant.

            In 2007 the U.S. Supreme Court decided  MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118. The Court discussed circumstances in which the sending of a letter by a patent owner might present grounds for the recipient of the letter to file a suit seeking a declaration that, among other things, there is no infringement and the patent is invalid. Since the MedImmune decision, many cases have fine-tuned the circumstances in which a declaratory judgment action may, or may not, be filed. A recent post by Professor Lisa Dolak of Syracuse University (and a former Federal Circuit Law Clerk) provides an excellent summary of many of those cases. For example, a statement that the patent owner “does not intend to sue” is likely not sufficient to end the suit for declaratory judgment. Similarly, a stated “continued willingness to negotiate” might be useless in preventing or stopping the declaratory judgment action. 

            It is clear that MedImmune has altered the world in which a patent owner may safely initiate communication with a potential infringer or licensee of the patent. Before sending any letters, the patent owner should be working with patent litigation counsel to make sure that the risks of a hostile declaratory judgment action are carefully evaluated and a fully informed decision made about how to go about enforcing the patent.

 

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