§23-112. Prohibited communications related to patent infringement -

531 words·~2 min read·/ok/title-23-damages/23-112

A research copy — for the controlling text, always check the official state or federal source. Not legal advice.

Exceptions.

A. No person shall, in connection with the assertion of a United States patent, send or cause any person to send any written or electronic communication that states that the intended recipient or any affiliated person is infringing or has infringed a patent and bears liability or owes compensation to another person, if:

1. The communication falsely states that litigation has been filed against the recipient, or threatens litigation if compensation is not paid or the infringement issue is not otherwise resolved and there is a consistent pattern of such threats having been issued and no litigation having been filed;

2. The communication falsely states that litigation has been filed against the intended recipient or any affiliated person; or

3. The assertions contained in the communication lack a reasonable basis in fact or law because:

the person asserting the patent is not a person, or

does not represent a person, with the current right to

license the patent to, or to enforce the patent

against, the intended recipient or any affiliated

person,

b. the communication seeks compensation for a patent that

has been held to be invalid or unenforceable in a

final, unappealable or unappealed judicial or

administrative decision,

c. the communication seeks compensation on account of

activities undertaken after the patent has expired, or

d. the content of the communication fails to include such

information necessary to inform an intended recipient

or any affiliated person about the patent assertion by

failing to include any one of the following:

(1)the identity of the person asserting a right to

license the patent to or enforce the patent

against the intended recipient or any affiliated

person,

(2)the patent number issued by the United States

Patent and Trademark Office alleged to have been

infringed, or

(3)the factual allegations concerning the specific

areas in which the intended recipient or

affiliated person's products, services, or

technology infringed the patent or are covered by

the claims in the patent.

B. Nothing in this section shall be construed to be a violation of this chapter for any person who owns or has the right to license or enforce a patent to:

1. Advise others of that ownership or right of license or enforcement;

2. Communicate to others that a patent is available for license or sale;

3. Notify another of the infringement of the patent; or

4. Seek compensation for past or present infringement, or for a license to the patent, provided that the person is not acting in bad faith.

C. The provisions of this act shall not apply to any written or electronic communication sent by:

1. Any owner of a patent who is using the patent in connection with substantial research, development, production, manufacturing, processing or delivery of products or materials;

2. Any institution of higher education; or

3. Any technology transfer organization whose primary purpose is to facilitate the commercialization of technology developed by an institution of higher education.

D. The provisions of this act shall not apply to a demand letter or civil action that includes a claim for relief arising under 35 U.S.C., Section 271(e)(2). Added by Laws 2014, c. 305, § 2, eff. Nov. 1, 2014.