How to Write a Patent Cease and Desist Demand Letter and What to Be Careful of. Episode 104

Introduction to Cease and Desist Letters

In the last episode, I talked about a general overview of patent litigation, and that it usually starts with a demand letter, also called a cease and desist letter. Technically, you can demand whatever you want, and not necessarily ask someone to “cease and desist,” but probably what’s happening is that someone is selling a product that you believe is infringing your patent and you want them to stop. Maybe you don’t want them to stop—maybe you want them to pay you a royalty—and that’s fine, but if they aren’t going to pay you a royalty, you want them to stop. So, it’s really a type of cease and desist letter.

Tone and Strategy

There are all kinds of strategies for how forceful you want to be. Do you want to be really aggressive and say up front that you’re going to sue them? Or do you want to be more friendly so you can enter business negotiations on good terms? It really depends on the situation, so I’m going to go through one kind of cease and desist letter in this episode.

Perception of Letters from Individual Inventors

If a company gets a cease and desist letter from an individual inventor, it’s not going to be taken as seriously as if it comes from an attorney. They might just ignore your letter because they know that, at some point, if you do want to sue them, you’re going to get an attorney to do it, and the attorney is going to send a more formal demand. So, there likely isn’t any harm to them by ignoring your letter. They may figure it’s more financially practical to ignore your letter and hope you go away.

Basic Format of the Letter

Start with a professional-looking letterhead with your name at the top. Put the date of the letter below.

In the “To” category, identify who you are addressing. Maybe it’s the legal department or the CEO. Also, state how you are sending it. If you’re using email, write “Via Email.” I recommend also sending it by certified mail, so include “Via Email and Certified Mail.”

Below that, add a “Re:” line. For example, “Re: Infringement of Patents by [Company Name].”

Start your letter with “Dear [CEO Name],”

Sample Introduction Paragraph

“I am John Smith, manufacturer and seller of a well-known and commercially successful avocado slicer. As you are likely aware, I own intellectual property covering the avocado slicer sold under the brand name ASB, including a U.S. patent for the avocado slicer. The purpose of this letter is to address your continuing infringement of my patent rights.”

Patent Infringement Section

You can label this section “Patent Infringement” if you plan on also including sections on trademark or copyright infringement.

“I am the owner of U.S. Patent No. [XXXXXXX], issued on [date], entitled “[Patent Title].” A copy of this patent is attached hereto as Exhibit A.”

Describe your patent claims clearly, using the language from your claims. For example:

“The patent claims an avocado slicer that has a) a splitting blade, b) multiple slicer blades, and c) a pitter.”

You might want to add, “These features are shown in annotated Figure 1 of the patent below.”

Describe Your Product

“Since at least as early as January 2018, I have sold in the United States an avocado slicer under the ASB brand. Photographs of the ASB brand avocado slicer are shown below, annotated to highlight the claimed features.”

Describe the Infringing Product

“I have recently learned that IPC (Infringing Product Company) is marketing, selling, offering to sell, and/or importing in the United States an avocado slicer under the brand name IPC Avocado Slicer, Model Number X. The IPC slicer includes the patented features of my patent: a splitting blade, multiple slicer blades, and a pitter. Please see the annotated image below.”

Demand Paragraph

“Therefore, it appears that my patent is being infringed by IPC’s marketing, sale, offering for sale, and/or importation of the IPC avocado slicer product. I demand that IPC immediately cease and desist from any and all making, using, marketing, selling, and/or offering to sell the infringing IPC avocado slicer product.

As this letter serves to put IPC on notice of its unlawful, unauthorized, and infringing acts with regard to my valuable intellectual property rights, any attempts to make, use, market, sell, and/or offer for sale the IPC avocado slicer will constitute willful infringement and provide grounds for me to seek treble damages should litigation become necessary.

I await your prompt response. In the meantime, if you have any questions, please feel free to contact me.”

Sincerely,

[Your Name and Signature]

Exhibit A

Add a page titled “Exhibit A,” followed by a copy of your patent.

Explanation of Willful Infringement

If the other party knowingly continues to infringe your patent, it may be considered “willful infringement,” which allows for up to three times the regular damages. So, if you normally would be awarded $1,000,000 in lost profits, with willful infringement, that could become $3,000,000. That’s why putting them on notice is important and strategic.

Litigation Strategy: Be Careful Where You Send Your Letter

Be cautious when sending a cease and desist letter to a company in another state. You could end up having to litigate in their state, not yours. For example, if you’re in California and you send a letter to a company in New York, the case might end up in New York. That’s because sending a cease and desist letter can create a legal controversy, allowing the recipient to file a declaratory judgment action in their own state.

Declaratory Judgment Risk

Even a non-aggressive letter that merely references your patent may be enough to trigger declaratory judgment jurisdiction, depending on the totality of the circumstances. Courts consider various factors: your litigation history, how detailed the letter is, the presence of infringement charts or annotated images, and whether it truly presents a threat of enforcement.

Conclusion: Strategy Matters

You need to be strategic when sending a cease and desist letter. If you’re not prepared to litigate in another state, think carefully before sending. Also, if you receive a cease and desist letter, consider whether you want to file for declaratory relief in your own jurisdiction. Some courts are more favorable to patent owners than others, so location and timing can be key elements in your strategy.