Evolving Requirements of Patent Notice Letters and Complaints
By David B. Abel
David Abel is an intellectual property lawyer with experience representing plaintiffs and defendants in patent, copyright, trademark, trade secret and unfair competition litigation. He is licensed in California and before the U.S. Patent and Trademark Office, having prosecuted over 70 applications. Before starting his own practice, David was a partner in DLA Piper, and Squire, Sanders & Dempsey. He has been named a Southern California Super Lawyer in 2013 and 2014.
Patent infringement license demands and litigation impose substantial financial burdens on companies and businesses, including small businesses with limited resources. Monetization activities of so called "Non-Practicing Entities" or simply "NPEs" often start with demand letters sent to a business that include an assertion of infringement and an offer to license intellectual property rights. The demand letter may be the first step in an enforcement action, as the U.S. Patent laws provide that damages do not accrue until after an alleged infringer has notice of the patent.
Notice from an NPE requires a written infringement allegation or the filing of a complaint.1 If the offer to license is not accepted and the patentee (the owner of the patent, here, the NPE) proceeds with filing a complaint, the complaint may only need to comply with the minimal allegation requirements of Form 182 of the Appendix of Forms to the Federal Rules of Civil Procedure.3 A patentee can take advantage of the minimal pleading requirements and initiate licensing and litigation actions without a substantial investment.