A Patentee's Dilemma: Providing Actual Notice of Infringement Without Becoming Subject to a Declaratory Judgment Action

摘要

To satisfy S 287(a)'s actual notice requirement and minimize the risk of being subjected to a declaratory judgment action, a communication to the accused infringer should, at a minimum: 1. Be sent by the patentee or its counsel; 2. Identify the owner of the patent; 3. Identify the patent-at-issue; 4. Specify the activity that is believed to be an infringement with reference to at least one allegedly infringing product of the accused infringer; and 5. Include a proposal to abate the infringement, such as by offering the accused infringer a license. If the patentee becomes aware of additional products that it believes infringe the patent, then the patentee should, out of an abundance of caution, consider providing the accused infringer with an updated notice letter when the additional products are "wholly different, unrelated to, or in a different family or class from the accused product(s) identified in the earlier notice letter.