Until recently, patent owners frequently initiated patent license negotiations by sending carefully worded licensing letters to selected recipients.  A typical letter identified a “patent of interest” with respect to some product of the letter recipient.  These letters posed a risk to the patent owner-sender.  A letter recipient placed in reasonable apprehension of being sued could immediately apply to the court of his choice to have infringement questions decided.

If you are a recipient of a patent licensing letter, recent legal developments improve your chances of gaining immediate access to a court of your choice based on the contents of your licensing letter.  But there’s a catch in this development.  The legal threshold for gaining access to a court may be lower, but the expense of the resulting litigation is not. 

These four basic screening questions could save you a trip to the courthouse.  

1. Is the patent in question an issued patent?

Published patent applications and issued patents appear similar. To tell the difference, look in the top right portion of the document cover page. Issued patents will have a patent number and date of issuance. Published patent applications will have a publication number and date.   

Only issued patents can be enforced. Patent applications are not enforceable until issued. For published patent applications, visit the U.S. Patent and Trademark Office (USPTO) Web site at www.uspto.gov.   Choose the ‘Public PAIR’ option. Enter the application serial number. The records you see might hint at an examination outcome and time frame.

2. Is the patent in question in force?

“In force” means the patent owner has paid the required maintenance fees and the patent term has not expired. Maintenance fees are due at 3 1/2, 7 1/2, and 11 1/2 years after a utility patent is granted. No maintenance fees are required for design patents. To find out if maintenance fees are paid up, visit www.uspto.govand follow the links for “Maintain/Pay Fees.”

To find out if the patent term has expired, look for the filing date in the upper left section of the cover page. Was the application filedon or after June 8, 1995? If so, the patent likely expires 20 years from the first filing date. Design patents expire 14 years from the grant date. Was the patent in force on June 8, 1995, or issued on an application filed prior to June 8, 1995? If so, the patent term expires on the later of: twenty years from the first filing date, or seventeen years from the patent grant date.
 

3. Is the patent issued in a country in which you have no activity?

Patents are regional in scope. A patent issued in another country, or region, cannot be asserted against you unless your product enters that country or region, or unless you otherwise make, use or sell your product in that country or region.
 

4. Do the CLAIMS of the patent in question at least arguably match the features of your product or process?

The patent claims, not the invention description, determine infringement. For example, a patent may describe in great detail a widget with parts A, B, C and D.  Your product may have A and B, exactly as described.  However, if the patent CLAIM calls for parts A, B and C, and your product is found to have only A and B, and not C (or its legal equivalent), your product is not likely to be found by a court to infringe that claim.  

The information above is provided for general informational use only. This information should never be used as a substitute for legal advice from your patent attorney.   

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