Patent owners may create risks with cease‑and‑desist letters

Q&A with Jessica John Bowman

published in The Oklahoman | September 26, 2014

It’s not uncommon for a company to want to contact a competitor that it believes is infringing one of its patents and demand that the competitor cease the infringing activity, but taking such action is not always advisable. McAfee & Taft intellectual property attorney Jessica John Bowman was interviewed by The Oklahoman about the risks of sending cease-and-desist letters, even artfully crafted ones that avoid outright allegations.

“If an ‘actual controversy’ exists between the patent holder and the competitor, then the competitor has the option of initiating a declaratory judgment action — a lawsuit seeking a ruling from the court that, for example, it doesn’t infringe the patents at issue — against the patent holder,” said John Bowman. “By contacting the competitor, whether by phone, in person, or through a formal cease-and-desist letter, the patent holder could inadvertently create the type of ‘actual controversy’” necessary to permit the competitor to initiate a declaratory judgment action.”

She explained that declaratory judgment suits can put the patent holder at a strategic disadvantage in some respects, including losing control over the choice of forum.

“Any patent holder who believes his patents are being infringed should talk to an attorney to learn the risks and benefits of sending a cease-and-desist letter, to understand the steps that it can take to help assure that any lawsuit will be in the forum of its choosing, and to ensure that it is well-situated to respond quickly and decisively in the event a declaratory judgment action is filed,” she said.