This guide on how to prepare a cease and desist letter is a basic checklist for enforcing patent rights against a suspected infringer. Before writing the letter, the rights owner must conduct a thorough investigation. After writing the letter, the rights owner should be prepared to litigate if necessary. Writing a cease and desist letter is not for amateurs. Rights owners are encouraged to consult with an intellectual property attorney before undertaking an enforcement action.
The pre-letter investigation
A rights owner must ensure that her patent rights are sound before she goes about enforcing them. She should verify that the patent actually issued, either by personal knowledge if she is the original inventor, or by having a clear chain of title whereby the rights of the inventor were assigned to her. Inventorship and assignment status of a patent issued in the United States can be verified by a simple patent search conducted at the official Patent office website, http://www.uspto.gov/patents/process/search/index.jsp.
Having an issued patent is only the first step. The rights owner should also verify that the proper patent maintenance fees have been paid. Patent rights can lapse and be unenforceable if maintenance fees are not paid.
Assuming the patent was issued and maintenance fees were paid, the rights owner should investigate whether authorized products were marked with the patent number. If the products were marked, the owner has a stronger argument that the infringer was on notice that the patented technology was protected by patent law.
Finally, the rights owner must purchase the product accused of infringing the patent (the “accused product”). Under U.S. Patent law, a patent is infringed by one who makes, uses, sells, offers to sell, or imports a product that embodies the patented technology. By purchasing the product, the rights owner can verify that the technology used is the same; can verify the manufacturer of the infringing product; and can prove that the product has been sold at least once.
Writing the letter
The form of a cease and desist letter is simple. Paragraph one explains the relationship between the letter writer and the rights owner. The letter writer should be an attorney but can also be an agent of the rights owner, or the owner herself.
Paragraph two explains the rights being asserted, usually by making reference to the patent number granted by the Patent Office. This paragraph also states that no one has rights to use the patented technology without the rights owner’s permission.
Paragraph three describes the accused product: what it is called, when and where it was purchased, what serial numbers or other identifying information appear on the product to help the recipient of the letter identify which product is at issue. It is typical to include a photograph of the accused product, and a photocopy of the receipt for its purchase.
Paragraph four demands that the recipient cease and desist making the accused product and offering it for sale.
Paragraph five demands an accounting of sales and profits of the accused product and any other products that use the patented technology.
Paragraph six demands that the infringer protect and retain any documents, e-mail, and other business records relating to the infringement.
Paragraph seven invites a response and gives the infringer a deadline by which to respond to the letter.
No one should dabble in cease and desist letters. The rights owner sends the letter hoping that the infringer will cooperate and pay damages, but rarely does that happen.
An infringer might respond merely by saying that the accused product does not infringe. However, An infringer might also respond by filing a preemptive strike – a lawsuit requesting a “declaratory judgment of non-infringement,” or a court order stating that the accused product does not infringe the patent.
The stakes, and the legal fees, can grow very quickly after a rights owner sends a cease and desist letter. Intellectual property rights owners should seek legal advice before asserting their patent rights through a cease and desist letter.