Patent Law

Patentees now proceed with caution when approaching a potential licensee. The Supreme Court's 2007 MedImmune v. Genentech decision broadened the availability of declaratory judgment actions even when the potential licensee has no apprehension of suit. In a recent IP Today [$$$] article, Kristen Doyle provides five tips to help patentees avoid declaratory judgment jurisdiction:

1. File suit prior to sending a demand letter. (The suit typically need not be pursued for 3-4 months).
2. Send bland demand letters that avoid infringement allegations, threats of litigation, or even for licensing fees and that are signed by non-lawyers. Doyle could find not post-MedImmune decision that finds DJ jurisdiction based only on a letter that merely identified a patent and stated that the patent was available for licensing.
3. Establish a definite negotiation period.
4. Ask for a confidentiality agreement when negotiating.
5. File the litigation in the "most logical venue."