Receiving a patent cease and desist letter can be alarming. These letters typically demand that you stop manufacturing, selling, or using a product or technology that allegedly infringes on a patent holder’s rights. You may have questions, like:
- How should I respond?
- What are the grounds for a cease and desist letter?
- Must I cease and desist?
In short, if you receive a cease and desist letter, read it carefully, then consult a patent attorney.
At Jones Intellectual Property, we focus exclusively on protecting intellectual property for businesses, inventors, startups, and small and medium-sized enterprises (SMEs). Led by Michael Jones, our firm provides personalized, affordable intellectual property (IP) legal services, including patent advocacy, trademark registration, copyright protection, and IP litigation. We leverage extensive technical knowledge and industry experience to deliver effective legal strategies to safeguard your innovations and business interests.
What Are Cease and Desist Letters?
Cease and desist letters are formal notices demanding that an individual or business stop engaging in specific activities that allegedly infringe on the letter sender’s legal patent rights. In the context of patent law, they typically accuse the recipient of unauthorized use of a patented invention, process, or design, and demand that they stop.
Receiving a cease and desist letter does not automatically mean that you are infringing, but it does indicate that the patent holder believes you are. In other words, the letter itself does not have legal effect, but failing to respond can lead to the sender initiating a patent infringement lawsuit.
What Are the Grounds for a Cease and Desist Letter?
Common grounds for sending a cease and desist letter include:
- Direct infringement—making, using, selling, or importing a patented invention without the patent holder’s permission;
- Indirect infringement—encouraging or assisting another party to infringe a patent, such as by providing instructions, components, or financial support;
- Contributory infringement—supplying a component or part with no substantial non-infringing use that is specifically designed for use in a patented invention;
- Importing infringing products—importing products that infringe on a U.S. patent, exposing companies to liability even if the manufacturing occurs overseas; and
- Violating patent licensing terms—using a patented invention outside the scope of a license agreement, such as by exceeding the licensed territory, fields of use, or specified duration.
If the patent holder sues you and, at the end of the lawsuit, the judge concludes infringement occurred, it may issue a cease and desist order identifying how you violated the patent and what you must do. Unlike the letter, that order is legally binding.
What Qualifies for a Cease and Desist Order?
A cease and desist order is a formal, court-issued directive that requires an individual or business to stop engaging in identified activities that infringe on another party’s legal rights. A judge may issue a patent cease and desist order if the patent holder proves that:
- They have a valid, enforceable patent;
- The accused party’s product, process, or technology infringes on at least one part of the patent; and
- Continued infringement would cause irreparable harm that monetary damages alone cannot fully compensate for.
Courts may also consider the relative harm to both parties and whether granting the order serves the public interest, particularly if the patented technology is critical for public health, safety, or welfare. Michael can help you understand what qualifies for a cease and desist order and develop a plan should you face one.
What to Do If You Receive a Patent Cease and Desist Letter
A patent cease and desist letter requires a careful, strategic response. When you receive a letter, take a breath and remember it does not have legal effect. However, it indicates a patent holder’s potential intention to seek a court order requiring you to stop what you are doing. Then, read the letter carefully to ensure you understand what the sender claims you are doing and how it violates their patent rights.
Review the Letter Carefully
Start by thoroughly reading the cease and desist letter. Pay specific attention to the following:
- The specific patent or patents you allegedly infringed on,
- The allegedly infringing activities, and
- What the sender wants you to do.
Ensure you understand how the patent holder believes you are infringing and what they expect you to do about it.
Consult a Patent Attorney
After you read through the letter, consult a lawyer. Patent law is highly specialized and technically complex, making it crucial to consult an experienced patent attorney who can:
- Assess the strength of the patent holder’s claims;
- Advise you on potential defenses;
- Help you develop a legal strategy for resolving the dispute efficiently and effectively; and
- Represent you in negotiations, patent office proceedings, or court.
Michael can help you determine whether the patent is legally valid, whether your activities actually infringe the patent, and what you should do next.
Consider Potential Resolutions
You may have several options for resolving the dispute depending on the circumstances. If part of the claim is valid, you might:
- Negotiate a licensing agreement, which may include a one-time payment, royalties, or cross-licensing arrangements;
- Modify your product to avoid infringement; or
- Stop using the patented invention.
If the patent holder’s claim is weak, you can also challenge the patent’s validity through:
- Negotiations. You may convince the holder to drop their claims against you.
- Patent reexamination. A patent owner or a third party can ask the United States Patent and Trademark Office (USPTO) to reconsider whether the patent is valid based on newly discovered prior art or previously unconsidered evidence.
- Inter partes review. A trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims.
- A declaratory judgment. In a lawsuit, you can counterclaim and request that the court determine that the patent is invalid, unenforceable, or not infringed.
Your lawyer can help you choose the best path forward.
Protecting Your Business and Intellectual Property
If you have received a patent cease and desist letter, Jones Intellectual Property can help. Michael provides comprehensive patent defense services, including infringement analysis, patent validity assessments, and strategic negotiation support. Our team understands the challenges of protecting innovative technologies and offers personalized, cost-effective legal solutions to safeguard your business. Contact Jones Intellectual Property today to discuss your case.
