What are the steps and options available when my company receives a "cease and desist" from another company?

You should contact a patent lawyer. Patent lawyers are specialists that have passed a separate patent bar (in addition to the bar that all lawyers must pass to get licensed). A good patent attorney should also have a strong scientific and technical background and/or education, so they can understand the invention and its technical merits. I would add that the patent lawyer should have an engineering degree, preferably one that is relevant to the patent in question (i.e., a chemical engineer for a plastics patent or a biomedical engineer for a prosthetic invention. Patent attorneys not only can represent clients before the Patent Office, part of the United States Patent and Trademark Office, but can provide you with a "patentability" - a legal opinion on the validity (or invalidity) of the particular patent.

Be aware there are also "patent agents". Patent agents can also represent you before the Patent office, but the USPTO Rules of Ethics and Professionalism specifically states that effective as of September 15, 2008, a patent agent may not provide a patentability opinion for a thrid party's patent when you are contemplating litigation. You are in luck since California happens to have the highest number of patent lawyers in the country.

This answer is for informational purposes only and is not intended to provide legal advice or create an attorney-client relationship. Please consult with a patent attorney who is experienced with patentability opinions and/or lpatent litigation for legal advice that is tailored to your particular circumstances and facts. Good luck to you.

You need a patent litigator either way, and either come to an agreement, or start litigation to challenge their patent, or simply refute their infringement claim.

It sounds like their C&D was oral and not very formal, and you don't specify if they had a lawyer make the C&D call (lawyers don't usually issue C&Ds orally), so you may be best off getting more aggressive with them now.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.


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I agree with M. Koslyn that you need to contact an intellectual property LITIGATOR with experience in patent infringement cases. It's a litigator's job to resolve disputes. It is a registered patent attorney's job to persuade the Patent Office to issue a patent. Those are very different skill sets. You need someone with the former -- and you need to understand that handling all the emotional and legal dynamics of a dispute is a process quite unlike what's shown on our half hour television shows. Nuance, insight, practicality, and a killer instinct are all required. Some attorneys, such as myself, are both litigators and registered patent attorneys. But the latter is not a requirement to be a very good dispute-solver (though a non-patent attorney litigator will have to consult with a registered patent attorney).

As noted, an oral cease and desist demand has little legal effect. Moreover, a few years ago the law changed and stopped requiring an alleged infringer to affirmatively take steps to evaluate whether it was, in fact, infringing once it was put on notice of the infringement claim. In short, the "demand" that you received does not trigger a legal duty on your part to do anything (assuming ONLY the facts in your question).

Nonetheless, you NEED to hire an intellectual property litigator very soon to strategize your response to the demand. That response could range from doing nothing, to issuing instructions to your dealer network, to publishing a press release, and all the way up to filing a "declaratory judgment action" to ask a federal court to decide if you have the right to sell your contraption in light of the other fella's patent. Good luck.

While I agree that a patent litigator is essential if you move forward with a lawsuit, I disagree that a patent ligitator can provide you with the best advice upfront. You will probaly want to receive a non-infringement opinion regarding whether your product infringes the other companies patent. You may also wish to receive an invalidity opinion regarding whether the other patent can be invalidated for any reason. I personally beleive that patent attorneys that specalize in prosecuting patents before the USPTO are better situated to provide these types of opinons.

Many firms, especially the larger firms will have both types of patent attorneys, and in many cases the attorneys will work collaboratively on you case.