Section 416.652

Title XXVI TRADE AND COMMERCE

Chapter 416

Effective - 28 Aug 2014   

  416.652.  Demand letters, no bad faith assertions of patent infringement — factors court may consider. — 1.  No person shall make a bad faith assertion of patent infringement in a demand letter.

  2.  A court may consider the following factors as evidence that a person has made a bad faith assertion of patent infringement in a demand letter:

  (1)  The demand letter does not contain the following information:

  (a)  The patent number;

  (b)  The name and address of the patent owner or owners and assignee or assignees, if any; and

  (c)  Factual allegations concerning the specific areas in which the target's products, services, or technology infringe the patent or are covered by the claims in the patent;

  (2)  The demand letter lacks the information described in subdivision (1) of this subsection, the target requests the information, and the person fails to provide the information within a reasonable period of time;

  (3)  The demand letter demands payment of a license fee or response within an unreasonably short period of time;

  (4)  The person offers to license the patent for an amount that is not based on a reasonable estimate of the value of the license;

  (5)  The person, company, or any of its subsidiaries or affiliates has previously presented a demand letter claiming or asserting patent infringement of the same patent under substantially the same circumstances, and a court has entered a final judgment that the demand letter presented a bad faith assertion of patent infringement;

  (6)  The person attempted to enforce the claim of patent infringement in litigation, and a court found the claim to be brought in bad faith; and

  (7)  Any other factor the court finds relevant.

  3.  A court may consider the following factors as evidence that a person has not made a bad faith assertion of patent infringement:

  (1)  The demand letter contains the information described in subdivision (1) of subsection 2 of this section;

  (2)  If the demand letter lacks the information described in subdivision (1) of subsection 2 of this section and the target requests the information, the person provides the information within a reasonable period of time;

  (3)  The person engages in a good faith effort to establish that the target has infringed the patent and to negotiate an appropriate remedy;

  (4)  The person makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent;

  (5)  The person is:

  (a)  The inventor or joint inventor holding the patent or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee; or

  (b)  An institution of higher education or a technology transfer organization owned or affiliated with an institution of higher education;

  (6)  The person has:

  (a)  Demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent; or

  (b)  Successfully enforced the patent or a substantially similar patent through litigation; and

  (7)  Any other factor the court finds relevant.

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(L. 2014 S.B. 706)