A Second Opinion

Submitted by patentadmin on Wed, 03/03/2010 - 07:06

Recently, we came across an article, "The Art Of Writing License Invitation Letters," written by a couple of attorneys from the Greenberg Traurig law firm. The article offers advice on drafting letters which offer the recipient a patent license, without conferring standing to bring a declaratory judgment action (known as a “DJ” to those of us in the patent biz). Having ourselves written blogs on the SanDisk, MedImmune and, most recently, the Hewlett Packard cases – the very cases comprising the basis of the Greenberg Traurig article – we were overcome with professional curiosity. Did they come to the same conclusions as we did? The short answer: yes.

Although our blog posts are clearly more entertaining (see e.g. High Noon on this blog), we agree with all of the recommendations set forth in the article. However, three points, made in the article, merit greater emphasis. First, as noted by the article’s authors, “the standard for determining whether DJ jurisdiction exists in patent cases remains highly fact-intensive.” Translation into peoplespeak: no matter how careful you are in following the article’s recommendations, you can’t be sure you won’t get hit with a DJ. Second, “patent holding companies may face an uphill battle in sending license inquiry letters without creating DJ jurisdiction.” Translation: if you’re an N.P.E., all bets are off. Third, “before sending any letters, the patent owner must be ready, willing and able to act quickly to file a patent infringement suit if licensing discussions fail or if litigation appears inevitable.” Amen.

Our advice still remains, “sue first, talk later.”

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