The current issue of the UK Intellectual Property Office's Insight newsletter carries a feature entitled "The Warning Shot". This turns out to be a piece by Eversheds technology partner Simon Crossley on how to write warning letter to a would-be infringer. Simon writes, in relevant part:
The IPKat thinks that initiatives like this are a brilliant idea. The UK IPO is not only providing official information for users of the IP system but is fulfilling a didactic role, raising the awareness of IP owners as to how the dynamics of the system operate once IP rights are used/abused in the market place. Merpel says, I'm waiting for the next issue, which is sure to carry advice on "How to respond to a warning letter".
"... Most of the time, an infringer will cave in once you have sent them a letter. For between £1,000 and £2,000, you are providing them with an easy way out of the mess into which they have got themselves. You might even ask them to pay your legal fees. [the IPKat notes that this is frequently demanded of even incidental infringers, for example those who find themselves in the middle of a supply chain -- who are asked to give undertakings not to infringe again, when they are scarcely in a position to verify whether goods are genuine or not, and who are only too happy not to infringe but don't see why they should have to pay the other side's costs when they willingly comply with all their other requests and the first they heard about the infringement was when they got the other side's solicitor's letter].
So what is the formula for putting together a letter that warns any trespassers off your rights? To emerge as the winner in any pre-trial correspondence, use these basic rules: watch your market; collect the evidence; write a careful letter; and then extract a promise from them to stop [these are necessary conditions for emerging as a winner, but not sufficient ones. You also need an addressee who is sensible, cooperative and risk-averse -- and in the case of the UK a postal system that is capable of getting your letter to the addressee].
Watch the market
You might as well forget about your IP, if you ignore what everyone else is doing in your market and let the unscrupulous trample on your rights. In the same way as you watch your competitors’ marketing strategy and product development, you should think about whether anyone is misusing your rights, swiping your inventions or lifting your software.
If they are sticking your brand on a product, that is easy to point out. In a complex piece of technology, it can be harder to prove that your IP is being abused. But without proof, you are not going to get any sort of remedy [good point: assertions of bad faith, angry criticisms of another's business practices and working on a good hunch are no substitutes for some sort of real evidence].
Go steady with the allegation
Once you have a case and evidence to prove it, then you might think all you have to do is write the infringer a letter, setting out your allegation. The difficulty is that in England, like most jurisdictions, there are laws to say that you cannot make unjustified threats against third parties. [this is a snare for lawyers as well as their clients, since they may be liable for threats made on their clients' behalf. Also, while many jurisdictions have laws against unjustified threats, they don't all have them in their IP laws -- they be lurking elsewhere in civil or procedural codes].
... So when drafting a letter, take care in alleging any infringement, otherwise you can easily fall foul of the law yourself.
Cease and desist
Once you have checked the status of your opponent, you can usually write your letter. In a page or two of plain English, say: here are my rights, here is what you are doing and here is why you are infringing, so stop it or I will take action against you in the courts. Alternatively, ask the infringer to sign an undertaking to prove that they will never use your rights again.
"Cease and desist" [Merpel says, this seems a bit repetitious to me. Can you desist without ceasing?], a request to halt an activity or face legal action, is normally your goal. You might also ask for any stocks of the offending products to be destroyed or sent to you. Sometimes, you might ask for damages, although you are unlikely to get too far - typically, a court decides any award.
If you are warning off traders, then your lawyer will probably produce a standard format document for you to fill in. In more complicated cases, you will collect the evidence, and let your lawyer put a framework round it.
Once your opponents see that you have collected the evidence and are taking advice, they will normally back down, although you may have to negotiate the terms.
Or they might reply by saying you are claiming rights that are far too broad and they are not doing anything wrong. That’s when you get into a fight and court proceedings begin.
The response to sending a letter depends on the identity of the infringer. In the UK and Europe, these types of letters are taken seriously. In the USA, they are less afraid. Any response might be felt to weaken their case. They will wait to see if you sue. Then they know you are serious. Such an approach is more usual in electronics and software. In life sciences, letters are taken more seriously. [US correspondence also seems to be driven by a paranioa about discovery in subsequent proceedings, and many Americans are ultra-cautious about not writing anything that they wouldn't want seen in court]
Letters remain a voluntary course of action - they do not force the other party to do anything. However, courts prefer you try to settle before going to trial. So, in any action that you take against an infringer, a letter is almost always the opening ploy".