I often get requests from clients to contact potential infringers with a cease and desist letter for infringing on their patent, even though the “patent” is actually an application that is currently undergoing prosecution. When your patent application is considered to have patent pending status, you have an application, essential a request, for a patent to be issued. There is never a guaranty a patent will issue from any application. It is also likely that the scope of the patent claims will change during the prosecution stages of the application. Therefore, what appears infringing under the current claims may not actually be infringing under the final issued patent. No infringement exists until a patent issues when the precise allowable claim language is known and defines the scope of patent protection granted to the patentee.
This is not to say that you shouldn’t send the cease and desist letter. By putting the infringer on notice of your claimed subject matter, you may be able to seek back damages once the patent does issue. There may also be options available to expedite patent prosecution when a potential infringement situation exists. A budget for such expediting proceedings is likely to be more than $5,000.
Asserting your rights during the pendency of your application must be undertaken with great care. You should also be aware that there are things the alleged infringer could do to make the Patent Office aware of prior art that could be used to make it more difficult and expensive for you to get a patent. This is true whether or not we send the cease and desist letter, especially given the publication of your patent application to the public. However, sending a cease and desist letter may prompt the alleged infringer to take more aggressive action in his defense. There is no way of knowing whether the potential infringer would take any action, or whether he is in an economic position do so at the time. It is important to consider that there may be a consequence of asserting your position during the pendency of the patent application. On the other side of the coin, it is often believed by practitioners that any patent that undergoes stronger scrutiny is much stronger and more unlikely to be invalidated in post-issuance proceedings. The more prior art the Patent Office considers when reviewing it, the less things that could later be alledged were never considered and form the basis for reexamination or invalidation.
Another factor to weigh is the early intervention strategy aimed at slowing expansion of your competitor’s market before it really develops. Preventative maintenance is always cheaper than repairing damage, even in legal matters. Sending the cease and desist letter may enhance your market share as the alleged infringer is dissuaded from continuing before he is heavily invested and making a lot of money on these new products. This makes it easier to “nip the bud” at inception, increasing the chance of success in neutralizing a competitor.
Thus, there are both upsides and downsides of sending early cease and desist letters. Each case needs to be considered on its own merits and circumstances to develop the best strategy for enforcement of intellectual property rights.