Stop, or I Will Sue: Writing an Effective Cease-And-Desist Letter for Patent Infringement

Under US patent law, a patent is a right granted to the inventor of a process, machine, article of manufacture, or composition of matter that is new, useful, and non-obvious. This is an exclusive right granted to the owner of an invention for their invention. The owner is granted the right to prevent other people from exploiting the patented invention for commercial benefits without permission. 

An infringement of this exclusive right occurs when an unauthorized party engages in activities only reserved for the patent owner. These include: 

• Manufacturing, using, selling, or importing a product that incorporates the patented invention without a valid license.
• Performing each step of a patented process in the case of a process patent. 

When an infringing act occurs, a patent owner has the exclusive right to enforce their patents. They can enforce their patents by initiating legal action against the infringing party. However, before any action is taken, they must send a cease and desist letter to the infringing party demanding that they stop the infringing activities that violate their rights.

In 2015, Jawbone, a wearable technology company, sent a cease and desist letter to Fitbit, alleging that Fitbit was infringing multiple patents related to fitness tracking technology. In their letter, Jawbone demanded that Fitbit immediately stop selling products that incorporated Jawbone's patented technology.

Fitbit didn’t comply, leading Jawbone to file a lawsuit. The case resulted in extensive litigation, with Jawbone seeking an import ban on Fitbit devices. Ultimately, Jawbone's financial troubles led to its closure in 2017, while Fitbit continued operations.

This case highlights how a cease and desist letter can escalate into a full-blown patent lawsuit if the alleged infringer refuses to comply.

In this article, we’ll explain what a cease and desist letter is, its relevance, and how to draft a professional, persuasive, and legally sound one that guarantees proper warning to infringers and sets the stage for a legal battle with a good chance of success.

What is a cease and desist letter? 

A cease and desist letter for patent infringement is a formal legal document sent by a patent owner or their legal representative to a party believed to be using, making, selling, or distributing a patented invention without authorization. This letter basically serves to pass the message, “Stop or I will sue!”

This letter informs the recipient of the infringement, demands that the infringing activity stop immediately, explains the legal basis of your claims, and warns of potential legal consequences if the infringement doesn't cease. Sometimes, it can be leveraged to resolve the dispute without the need to resort to protracted litigation. 

Key elements of a cease and desist letter for patent infringement

1. Sender's information

The first section of the letter should contain the name, address, and details of the patent owner.

2. Recipient's information

You should then clearly identify the alleged infringer, including their business name, address, and contact details.

3. Statement of patent ownership

You should specify the patent(s) in question, including the patent number(s), date of issuance, and a brief description of the patented invention. Without this specific identification, your letter risks being “dead on arrival” as it discloses no infringement.

4. Description of the infringement

You should then provide a detailed account of how the recipient of the letter is allegedly infringing the patent. This description could include the specific products, services, or processes subject to the violation or an elaborate comparison of the patented invention and the infringing product. 

For more clarity, evidence such as photos, screenshots, or documents should also be included. If possible, you must also include dates and locations of the purported infringement and any other supporting evidence.

5. Legal basis for the claim

You should outline your ownership and the legal protection provided by the law, including the relevant sections of the law that bestow upon you exclusive patent rights. You must also cite all relevant sections of the US patent law that have been violated.

6. Demand to cease infringement

The ultimate goal of a cease and desist letter is to get the infringing party to stop their infringement. As the owner of the patent, you should clearly state the demand for the recipient to immediately stop the infringing activity. 

You should highlight the infringing activities you intend to bring to an end. These may include halting the production, sale, or distribution of the infringing product, removing the product from stores or online platforms, or entirely ceasing marketing or advertising of the infringing product. 

Should you leave anything out, you risk getting caught in a loop of correspondence with the person infringing, as they may cease one activity highlighted but continue with another that was ignored in the letter.

7. Deadline for compliance

Be sure to provide a specific timeframe within which the recipient must comply. Without a specific deadline, the infringing party might choose to “sit on” your demands due to the lack of urgency portrayed by your letter. The usual period is 10 days.

8. Legal consequences of non-compliance

In the letter, you should warn of potential legal action if the recipient fails to comply. You could include consequences such as filing a lawsuit for patent infringement, seeking damages or an injunction, and demanding monetary compensation for past infringement.

9. Invitation to negotiate

In some cases, the letter may propose a licensing arrangement instead of litigation. This approach is optional and depends on what you intend to achieve as an outcome of the letter.

10. Reservation of rights and a no-waiver clause

You should include a statement stating that you reserve all rights to pursue all legal remedies available to you if necessary. You also need to clarify that sending the letter doesn't constitute a waiver of any legal rights.

11. Closing statement and signature

Conclude with a formal statement urging compliance and include the sender's signature, date, and position. You should also offer a point of contact in the closing statement in case the infringing party wishes to discuss a settlement or a licensing agreement. Most importantly, consider advising that all responses be conveyed through your legal representative.

What can you expect after a cease and desist letter is issued and received?

After receiving the letter, the alleged infringer has several options, which include:

Compliance

The recipient may choose to stop using the patented technology, remove the infringing product from the market, or, alternatively, agree to a licensing deal with the patent owner. This is often a peaceful response that is beneficial to the patent owner.

Seeking legal counsel

The recipient may consult a patent attorney to evaluate the validity of the claims, determine whether their product actually infringes the patent, or identify possible defenses. For example, they could argue that the patent is invalid, expired, or inapplicable to their line of products.

Requesting negotiations

If the recipient wishes to continue using the patented technology, they may attempt to negotiate a licensing agreement or settle the matter out of court.

Challenging the patent

The recipient may also respond by filing a counterclaim to invalidate the patent or seeking a declaratory judgment that no infringement has occurred. 

What are your next steps? 

Potential legal actions if compliance isn't achieved

If the recipient ignores or refuses to comply, you may file a lawsuit in a federal court (or an appropriate jurisdiction) and seek an injunction to stop further infringement. Similarly, in the same claim, you may also demand monetary damages, including lost profits or reasonable royalties.

Settlement or court ruling

The majority of patent infringement disputes are resolved through settlement rather than trial. However, should the case proceed to trial, a court will review the validity of the patent to determine whether infringement actually occurred and thereafter decide on damages or injunctive relief.

A cease and desist letter for patent infringement is critical for enforcing intellectual property rights. It provides the alleged infringer an opportunity to comply before facing legal consequences. 

Ensure your cease and desist letter is legally sound

Properly drafting a strong cease and desist letter ensures clarity, legal standing, and a greater chance of compliance or favorable resolution for you. In light of this, it’s important to always consult a qualified attorney to ensure your cease and desist letter is airtight and serves the intended function.

Additional sources

• Oh No! What to do if Someone Steals Your Patent
• 4 Tips to Determine: Do I Need a Patent Lawyer?

Glossary of legal terms

• Patent: A legal right granted to an inventor to exclude others from using, making, or selling their invention for a specified period.
• Infringement: Unauthorized use, sale, or distribution of a patented invention.
• Cease and desist letter: A formal demand to stop a specific action or face legal consequences.
• Injunction: A court order compelling or preventing a specific action.
• A licensing agreement: A legal contract allowing one party to use another's patented invention under agreed terms.
• Damages: Financial compensation awarded for patent infringement losses.
• Counterclaim: A legal claim made against the original plaintiff in response to a lawsuit.