Beating ‘wilful infringement’: a new alternative?

The most common tactics for defending allegations of wilful infringement can be risky and expensive. But a new Nevada court decision suggests there could be another way, as lawyers from Finnegan argue.

In the US, a patent holder who can prove wilful patent infringement can obtain treble damages. This can put dollar signs in the eyes of plaintiffs so, to establish knowledge, patent holders often send letters notifying potential infringers of their patented claims. In turn, this presents a delicate tightrope for defendants to walk by forcing them to decide how, and if, to respond. 

A common defence mechanism is to file away any accusation and, while waiting to be sued, prepare an opinion of counsel confirming that a recipient’s allegedly infringing activities were done in good faith and do not infringe.  

These opinions are expensive and they have some risks, such as waiving privilege with opinion counsel. But a new decision indicates that another possible defence is available when business or cost reasons dictate.