How to Draft a Patent Infringement Warning Letter in Korea

Patents are powerful legal tools for protecting creative ideas and technologies. However, when acts infringing upon these patent rights occur, the patent holder may need to take legal action. As a first step, a patent infringement warning letter serves as an effective means to resolve disputes and potentially avoid unnecessary litigation. This column will examine important considerations and methods for drafting a patent infringement warning letter.  

Purpose of a Patent Infringement Warning Letter

The primary purpose of a patent infringement warning letter is to notify the counterparty of the patent infringement, demand immediate corrective action, and convey an intent to resolve the issue without resorting to litigation. An effective warning letter can lead to the following outcomes:

• The counterparty ceases or modifies the infringing activity.
• Negotiations lead to a settlement payment or the conclusion of a license agreement.
• The patent holder's rights are formally documented, strengthening the legal basis for potential future actions.

Key Considerations When Drafting a Patent Infringement Warning Letter

A patent infringement warning letter is not merely a tool for threatening or intimidating the recipient. To be legally effective and enhance negotiating power, it must be drafted carefully and systematically.

(1) Clarity and SpecificityThe warning letter must clearly state the infringement claim and its basis. Ambiguous language can inadvertently provide grounds for rebuttal. Key content includes:

• Patent Title and Registration Number: Clearly identify the patent subject to the infringement claim.
• Relevant Patent Claims: Describe the core content of the patent related to the infringement assertion.
• Specific Basis for Infringement: Explain precisely how the counterparty's product, service, or technology infringes upon the patent claims.

(2) Professionalism and Legal BasisAs a legal document, the warning letter must comply with relevant laws and regulations and use professional terminology and phrasing. It is highly advisable to seek assistance from a specialist patent attorney or expert.

(3) Expressing Willingness for Cooperation and ResolutionRather than being overly aggressive, the warning letter should convey a willingness to resolve the problem. This increases the possibility of negotiation and can also be viewed favorably by a court should litigation ensue.

Components of a Patent Infringement Warning Letter

(1) Opening

• Sender Information: Include the patent holder's name, contact details, and address.
• Recipient Information: Specify the alleged infringer's company name, relevant contact person, etc.
• Purpose Statement: Briefly summarize the intent of the warning letter.

(2) Patent Information

• Detailed Patent Information: Registration number, title of the invention, registration date.
• Statement of Ownership: Assert that the sender holds the rights to the specified patent.

(3) Infringement Details

• Specific Explanation: Describe the specific manner in which the recipient's product, service, or technology infringes the patent.
• Technical Comparison: Compare the patent claims with the infringing elements (attach diagrams or figures if necessary to aid clarity).

(4) Demands

• Cessation of Infringing Activity.
• Negotiation of a License Agreement.
• Demand for Damages (if applicable and appropriate).

(5) Legal Warning

• Include a statement indicating that legal action will be considered if the demands are not met.
• Convey that the patent holder is considering exercising their rights, rather than detailing specific litigation plans.

(6) Request for Response

• Request a response from the recipient within a specific deadline (typically 2-4 weeks).
• State that further action will be taken if no response is received by the deadline.

Points to Note During Drafting

(1) Avoid Excessive LanguageAn overly threatening or insulting tone can be counterproductive. Notably, making false claims of patent infringement could potentially lead to the recipient filing a counterclaim for damages resulting from the improper warning letter.

(2) Conduct Sufficient Prior InvestigationThoroughly verify the legal validity of the infringement claim beforehand. It is crucial to analyze whether the target product or technology falls within the scope of the patent claims.

(3) Consider Negotiation PossibilitiesThe ultimate goal of a warning letter is often cessation of infringement or reaching a settlement. Proposing mutually beneficial negotiation terms is generally more advisable than issuing unconditional threats of litigation.

Response Strategy After Sending the Warning Letter

• Review the Response: Carefully examine the recipient's reply to decide on further negotiations or actions.
• Seek Settlement: Resolve the issue through means such as concluding a license agreement or agreeing on product modifications.
• Prepare for Legal Action: If the recipient ignores the demands, begin preparations for litigation.

Conclusion

A patent infringement warning letter is a critical first step in enforcing patent rights. A well-drafted letter plays a significant role in preventing legal disputes and achieving amicable resolutions. However, it is imperative to conduct a thorough legal review before sending the letter and to prepare a negotiation strategy in advance.  

Effectively responding to patent infringement not only solidifies the patent holder's rights but is also crucial for maintaining competitiveness in the market. Pine IP Firm provides customized solutions based on expertise and promptness. Contact us today to take the first step in protecting your patent rights!

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