Responding to Patent Demand Letters: Leveraging State Laws on Bad Faith Assertion of Patents

Patent disputes often start with the patent holder sending a demand letter to the alleged infringer. The best way to respond to demand letters, especially those from nonpracticing entities (NPEs), remains a challenge for many companies. After receiving a demand letter, the recipient should act to minimize or remove the risk to its business.

Recent state actions addressing bad faith assertions should also be considered. In the last two years, states have stepped in to fill a void left by Congress regarding bad faith patent assertions.

Over half the states have now passed laws to limit abusive practices by putting restrictions on patent demand letters. States have taken a variety of approaches to tackle the issue of bad faith patent assertions.

Responding to demand letters involves strategic decision-making, including factors such the patent owner’s proclivity for litigation, the relationship with the patent owner, the strength of the allegations, and what is being demanded by the patent owner.

Listen as our authoritative panel of patent attorneys examines how patent counsel should proceed upon receipt of a demand letter, including a discussion of legal and strategic considerations. The panel will also discuss current and proposed state laws, offer guidance on responding to patent demand letters, and outline navigating the new state laws.

1. Considerations in determining whether to respond to the demand letter
   1. Legal
   2. Strategic
2. State laws regarding bad faith assertion of patents
3. Responding to patent demand letters

The panel will review these and other key issues:

• What are the key considerations for patent counsel when evaluating whether and how to respond to patent demand letters?
• What is the effect of state laws on bad faith assertion claims on the response to a demand letter?
• What are some of the pitfalls patent counsel confront in responding to demand letters—and how can they be avoided?