Sec. 8. Requirement of clarity and specificity in demand letters
523 words·~2 min read·
/bill/114/s/1137/is/section-8A research copy — for the controlling text, always check the official state or federal source. Not legal advice.
Chapter 29 of title 35, United States Code, as amended by section 5, is amended by adding at the end the following: Subsection
(b)shall not apply— to written communication between parties— regarding existing licensing agreements; as part of an ongoing licensing negotiation, provided that the initial written notice complied with the requirements of subsection
(b)of this section; or sent after the initial written notice, provided that the initial written notice complied with the requirements of subsection
(b)of this section; or if the court determines it is in the interest of justice to waive the requirements of subsection (b). In a civil action alleging infringement of a patent in which the plaintiff has provided written notice of the accusation of infringement to the party accused of infringement prior to filing the action, the initial written notice shall contain the information required under paragraph
(2)or be subject to paragraph (3). The initial written notice described in paragraph
(1)shall contain, at a minimum— an identification of— each patent believed to be infringed, including the patent number; and at least one claim of each patent that is believed to be infringed; an identification of each product, process, apparatus, or chemical composition, including any manufacturer thereof, that is believed to infringe one or more claims of each patent under subparagraph (A); a clear and detailed description of the reasons why the plaintiff believes each patent identified under subparagraph
(A)is infringed; notice to the intended recipient that the intended recipient may have the right to a stay of any suit in accordance with section 299A; the identity of any person with the right to enforce each patent under subparagraph (A); and if compensation is proposed, a short and plain statement as to how that proposed compensation was determined. If the initial written notice provided to the defendant prior to the filing of the civil action did not contain the information required by paragraph (2), the defendant’s time to respond to the complaint shall be extended by an additional 30 days. . The table of sections for chapter 29 of title 35, United States Code, as amended by section 5, is amended by adding at the end the following: 299C. Pre-suit written notice. . Section 284 of title 35, United States Code, is amended— in the first undesignated paragraph, by striking Upon finding and inserting
(a); In general .—Upon finding in the second undesignated paragraph, by striking When the damages and inserting
(b); Assessment by court; treble damages .—When the damages by inserting after subsection (b), as designated by subparagraph (B), the following: A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification complies with the standards set out in section 299C(b)(2). ; and in the last undesignated paragraph, by striking The court and inserting
(d). Expert testimony .—The court The amendments made by this section shall take effect on the date that is 1 year after the date of enactment of this Act and shall apply to any action for which a complaint is filed on or after that date.