Guest article

How to respond to a Cease & Desist Letter

By James F. Ewing, Michelle A. Flores, and Michel Morency

- Last updated on GMT

Related tags: Patent application, Patent

Legal experts form Foley & Lardner suggest a strategy to
help nutraceuticals companies respond to an accusation of
infringing patent rights.

The nutraceuticals market is dynamic and competitive. As such, your nutraceuticals company may be subject to enforcement of another's patent rights. Receiving a Cease & Desist letter ('the Letter') accusing you of infringing the patent rights of another is an unwelcome notice that can create a sense of urgency akin to having been just set ablaze. Being subject to enforcement of another's patent rights, however, is not an uncommon occurrence for successful businesses in competitive markets such as the nutraceuticals market. Such letters usually identify the granted Patent(s) by its number(s), assert ownership to the Intellectual Property, and detail your alleged infringing activities as well as conditions and deadlines that are to be met. To avoid being burned in such circumstances, you may consider implementing a STOP, DROP and ROLL approach. STOP and objectively consider the claims ​ Implementing the STOP, DROP and ROLL approach does not​ mean that you need to immediately stop your business activities upon receiving a Cease & Desist letter. However, whether the Letter demands that you cease making, using, or selling a particular product or service, or merely suggests that you might be interested in licensing certain patent(s), you should stop to carefully consider the allegation, and refer it to knowledgeable Counsel. Being placed "on notice" of another's patent rights, is a legally significant event where you have a duty to act. Proactively addressing the concerns or demands of a patent owner serves to protect your company and mitigate exposure to possible damages and fees for alleged willful conduct. 'DROP a Line' to experienced patent counsel ​ Your response to the Letter should be timely, well-considered, and strategic. Before responding you need to engage the services of knowledgeable patent counsel. This may involve one or more individuals with expertise in patent prosecution and enforcement matters who can render an opinion regarding whether your commercial product or activities may infringe the patent claims asserted against you and/or assess the validity of these claims, and develop an appropriate response strategy. Enforcement issues can be highly complex and a skilled patent counsel will provide essential guidance to address the issues and assess the risks and potential commercial impact against your company. Be prepared to 'ROLL with the Punches' ​ Notification of potential enforcement of patent rights against your company can be very distracting and disruptive to your business. The motivation of the third party to enforce their intellectual property rights may be to simply have you stop certain business activities. Alternatively, the third party demands may be motivated by a desire to gain royalties through license opportunities. It is important to recognize that, despite difficult circumstances, engaging in a protracted and expensive court battle is often not necessary to resolve the issues at hand. Indeed, a careful assessment of the position and technology of each party may introduce a beneficial business solution for all parties through licensing or cross-licensing opportunities. Stepping back to assess potential win-win scenarios may be key to effectively shepherd your company through the complexities of a potential enforcement action. Simply ignoring a Cease & Desist letter will not make the issue go away and may result in increased costs and liability for the accused patent infringer. The STOP, DROP and ROLL approach provides a strategy to minimize potential adverse impacts in these situations. James F. Ewing, Michelle A. Flores, and Michel Morencyare attorneys with Foley & Lardner LLP. James F. Ewing is senior counsel in the Life Sciences Industry Team and can be reached at 617.342.4088 or by e-mail at jfewing'at' Flores is an associate in Foley & Lardner's Intellectual Property Litigation Practice can be reached at 617.502.3215 or by e-mail at mflores'at' Morency is a partner in the Life Sciences Industry Team and can be reached at 617.342.4080 or by e-mail at mmorency'at'

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