Managing Patent Risks – Performing Due Diligence + Responding to Demand Letters

To minimize patent risks, it is important to perform strategic due diligence prior to product launch.  In addition, new products, especially successful ones, often attract the attention of patent holders, who may send demand letters proclaiming their patents cover such products.  Receiving a patent demand letter can be a foreign and anxious experience for many in-house attorneys. While it is important for counsel receiving a patent demand letter to understand the scope of any allegations and the author’s motivation for sending it, even more critical is determining whether and how to respond. This presentation explores (1) the different types of patent demand letters that companies typically receive, (2) why appropriately addressing a patent demand letter can be critically important during subsequent litigation, (3) what steps counsel should consider taking in response to receiving a patent demand letter, and (4) considerations for seeking a formal opinion of counsel. This presentation will also include a decision-tree for responding to patent demand letters that counsel can quickly and easily reference in the event they receive one.  Q&A can also address the affirmative use of demand letters and where applicable. 

Speakers:

Chris Strobel, Associate, Shook, Hardy & Bacon

Mark Schafer, Associate, Shook, Hardy & Bacon