Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
  Email Newsletter icon, E-mail Newsletter icon, Email List icon, E-mail List iconJoin Email List  
 

Entries in Opinion (1)

Friday
Jul082011

I Received a Patent Cease and Desist Letter, What do I do?

If you make or even sell goods and services for long enough, you are bound to be sent a cease and desist letter.  No, that does not mean you are a bad person or a counterfeiter.  In fact, most infringement is not intentional.

The New York Times published an article about Ford being sued for its Sync product.  While the article suggests that Ford may not be an innocent infringer, the case demonstrates how a seemingly far-flung patent may be applied against a manufacturer in an unexpected way.

So what do you when you receive the patent cease and desist letter?

Contact a lawyer who is experienced in intellectual property.  A registered patent attorney who is experienced may be able to address issues of validity.

Check for insurance coverage.  You may have insurance coverage and may not even know it.  And, if you do have coverage, your policy may have notice requirements.

If you have a defense, get a formal opinion of non-infringement.  If the opinion meets specific court-set standards, the letter can be used to build an advice of counsel device.  Such a defense can prevent a finding of willful infringement and potential treble damages.

If you do not have a defense or if the uncertainty is too great, negotiate a license with the patent holder.  This may be an opportunity to apply technology exclusively to your product and not to your competitors!

The worst thing you can do is to do nothing.  Not replying will force the patent holder to file an infringement lawsuit in federal court and incur costs.  There may be times not to reply--but the decision should be made under the advice of an attorney.

Schedule an appointment with Loren Pearson to discuss your cease and desist letter.