Patent Cease & Desist Letter
This Patent Cease and Desist Letter (also known as a “letter of claim” or a “letter before action”) is designed for use as a first step when enforcing intellectual property rights. If you or your business become aware that someone is infringing your patent, action should be taken quickly once you are in possession of all the relevant facts. The key value of a cease and desist letter is that it puts an infringer on notice that their activities are known and aims to resolve the matter without recourse to costly and potentially time-consuming litigation. Caution, however, is advised (see below).
This Cease and Desist Letter template has recently been reviewed for compatibility with the Intellectual Property (Unjustified Threats) Act 2017 and has been updated to conform with current best practice.
This document is essentially two letters in one. Option one is designed for those who wish to take a softer approach. This option is designed to be informative rather than accusatory and invites the recipient to discuss the matter rather than requiring them to “cease and desist”. Option two is the more familiar cease and desist option, informing the recipient that they are infringing the sender’s patent and requiring them to comply with a series of undertakings.
When using the second option, great care should be taken so as to avoid being on the receiving end of a threats action. Unless it is absolutely clear that infringement is taking place, this template should not be used, and proper legal advice should be sought before taking any steps to contact the suspected infringer.
Those activities for which it is considered safe to threaten a suspected infringer with legal action are detailed in section 70A of the Patents Act 1977:
(2) A threat of infringement proceedings is not actionable if the threat –
(a) where the invention is a product, making a product for disposal or importing a product for disposal, or
(b) where the invention is a process, using a process.
(4) A threat of infringement proceedings is not actionable if the threat –
(a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product or process, and
(b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.
Nevertheless, any doubts should be referred to a lawyer before making communication with the alleged infringer.
When providing details and evidence of the alleged infringement, it is important to strike a balance: enough detail should be provided to support the allegation, but not so much that information is revealed that would place the accuser at a disadvantage. Evidence of infringement may include specimens, photographs and other documents.
Having set out the details of the owner’s patent and the alleged infringement, a series of undertakings required of the recipient is provided. When setting out that conduct which should be stopped, care should be taken to confine the requirements to those activities for which it is safe to make an accusation (see above). The second undertaking requires information from the infringer designed to enable the accuser to calculate what sums may be due to them to compensate for the infringement (a subsequent undertaking requires the infringer to pay such sums). It is important to note that what is sought will vary depending upon the circumstances. In some cases, a full account of profits may be desirable. On the other hand, for lesser infringement, it may be preferable to agree upon a smaller sum in the interests of concluding matters quickly and amicably without resorting to further legal action. Once again, where there is any doubt or disagreement, seeking proper legal advice is urged.
Optional phrases / clauses are enclosed in square brackets. These should be read carefully and selected so as to be compatible with one another. Unused options should be removed from the document.
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