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The Vermont Statutes Online



Title

09

:
Commerce and Trade






Chapter

120

:
BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT











 

§

4197. Bad faith assertions of patent infringement

(a) A person

shall not make a bad faith assertion of patent infringement.

(b) A court may

consider the following factors as evidence that a person has made a bad faith

assertion of patent infringement:

(1) The demand

letter does not contain the following information:

(A) the patent

number;

(B) the name and

address of the patent owner or owners and assignee or assignees, if any; and

(C) factual

allegations concerning the specific areas in which the target's products,

services, and technology infringe the patent or are covered by the claims in

the patent.

(2) Prior to

sending the demand letter, the person fails to conduct an analysis comparing

the claims in the patent to the target's products, services, and technology, or

such an analysis was done but does not identify specific areas in which the

products, services, and technology are covered by the claims in the patent.

(3) The demand

letter lacks the information described in subdivision (1) of this subsection,

the target requests the information, and the person fails to provide the

information within a reasonable period of time.

(4) The demand

letter demands payment of a license fee or response within an unreasonably

short period of time.

(5) The person

offers to license the patent for an amount that is not based on a reasonable

estimate of the value of the license.

(6) The claim or

assertion of patent infringement is meritless, and the person knew, or should

have known, that the claim or assertion is meritless.

(7) The claim or

assertion of patent infringement is deceptive.

(8) The person

or its subsidiaries or affiliates have previously filed or threatened to file

one or more lawsuits based on the same or similar claim of patent infringement,

and:

(A) those

threats or lawsuits lacked the information described in subdivision (1) of this

subsection; or

(B) the person

attempted to enforce the claim of patent infringement in litigation and a court

found the claim to be meritless.

(9) Any other

factor the court finds relevant.

(c) A court may

consider the following factors as evidence that a person has not made a bad

faith assertion of patent infringement:

(1) The demand

letter contains the information described in subdivision (b)(1) of this

section.

(2) Where the

demand letter lacks the information described in subdivision (b)(1) of this

section and the target requests the information, the person provides the

information within a reasonable period of time.

(3) The person

engages in a good faith effort to establish that the target has infringed the

patent and to negotiate an appropriate remedy.

(4) The person

makes a substantial investment in the use of the patent or in the production or

sale of a product or item covered by the patent.

(5) The person

is:

(A) the inventor

or joint inventor of the patent or, in the case of a patent filed by and

awarded to an assignee of the original inventor or joint inventor, is the

original assignee; or

(B) an

institution of higher education or a technology transfer organization owned or

affiliated with an institution of higher education.

(6) The person

has:

(A) demonstrated

good faith business practices in previous efforts to enforce the patent, or a

substantially similar patent; or

(B) successfully

enforced the patent, or a substantially similar patent, through litigation.

(7) Any other

factor the court finds relevant. (Added 2013, No. 44, § 6; 2013, No. 47, § 2,

eff. May 24, 2013.)