In Part 1 of this series on cease and desist letters, I suggested hiring an attorney for an infringement opinion if and when you are faced with a cease and desist. Before investing in the expense of negotiations and possible litigation, you will want to determine if there is any merit to the claim.
The other cost-effective measure to implement is due diligence. When you receive a cease and desist letter, it is important to collect as much information about the situation as possible. This will help you and your attorney make informed decisions about how to proceed and to develop the most effective legal strategy. This is called ‘due diligence.’
A competitive intelligence is an excellent due diligence measure to identify key information on the complainant by answering questions like:
- What is their business model?
- What is their corporate personality? What is their enforcement track record?
- Are they collaborative or adversarial?
- Do they have a strong IP portfolio or program?
- Do they have in-house counsel?
- Who is their IP counsel?
- What is their economic strength?
- How strong is the patent? Is it overly broad?
- Is this a populated art area?
- Has the patent been successfully enforced against others?
- What enforcement activity appears to be ongoing?
- Are there any facts to support patent invalidity?
- Is there any potential prior art?
- How important is this patent to the company’s overall revenue?
Each of these questions aims to provide valuable insight into the complainant and the patent at issue. This is certainly not an exhaustive list, but should inspire your thought process about circumstances that may impact your response to the cease and desist letter.