Have you infringed a patent with a supposed new invention? A warning letter is an established mean for patent holders to proceed against patent infringements. Even if the warning letter is an extra-judicial procedure, it is nevertheless made to prevent the patent infringement permanently like for instance a preliminary injunction. Today we would like to answer three important questions concerning this topic.
Why have I received a Warning Letter?
Warning letters in patent law are as usual as in trademark law or copyright. Patent owners choose this way to fight fakes and plagiarisms of their own inventions. The warning letter is an extra-judicial procedure. If you as a potential patent infringer succeed in agreeing with the patent owner in this way, it will be cheaper and less time consuming for every concerned party.
Maybe you have already received a permission request before the warning letter?! A permission request is intended to bring first light into the darkness of a possible patent infringement before the patent owner beings to proceed against you. It is a direct hint on the existing right that you could have infringed with your product. State your position concerning this permission request, preferably with the help of an attorney (that is more safe). If you?re ignoring a permission request, this would especially make you suspicious.
Which Consequences Has the Warning Letter?
A warning letter may have serious consequences. Ingoring it and hoping that nothing will happen is therefore not a good idea. Especially because a patent infringement can be much faster more expensive than for example a copyright infringement.
Similar to a warning letter in trademark law or copyright, the warning letter in patent law invites the potential infringer to certain certain actions:
- The most important thing: The infringer shall desist the infringing action immediately (like for instance the production and the sale of a faked technical instrument)
- The patent owner invites the infringer to submit a cease and desist declaration, that would mean: if the infringement should happen again in future, a contractual penalty has to be paid to the patent owner
- Sometimes the infringer shall additionally furnish particulars about the previous infringement actions such as the amount of technical instruments which he has already produced and sold
- ? and commit himself to refund the occurred or hereafter accruing damage.
What Does a Warning Letter Cost?
In case of warning letter due to a patent infringement the infringer has to pay the following:
- If you have handed in the demanded cease and desist declaration, you have to refund the lawyers? fees of the patent owner. Those relate to the economic interest of the patent owner and might vary deeply. In any event they can quickly become very expensive. In terms of patent infringements the economic interest is often residing between 100.000 and 500.000 Euros, often the costs are even higher.
- If you committed yourself to refund the occurred damage you have to budget those costs likewise
- If you signed the cease and desist declaration and an infringement happens again, the appointed contractual penalty will be due. Even if you think the penalty is too high and you want to reduce it by changing the cease and desist declaration, this might challenge the sincerity of your cease and desist declaration.
But I Did Nothing!
Sometimes a warning letter in patent right can also be used to put unpleasant competitors in their place. That means, if you?re absolutely sure that you haven?t infringed the patent or if you don?t understand some details of your situation, you?ll get help from a patent attorney. Maybe you don?t even have to pay as much as you have feared.
In any case, never ignore a warning letter! If you don?t make use of a proficient or if you ask for help too late, this might cost you your economic existence.