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[docmiata]

Okay guys, here's a good one:

I invented a new product in a crowded field, founded a company, raised venture capital, built a team, hired a large IP firm, was granted a US and various international patents, assigned all patent rights to the company, then was dismissed by the company.

Along the way I got suspicious of what might be going on and applied for and received a design patent for the "style" of the product that we brought to market, a feature that was not described or shown in the extensive utility patent.

The product and company are doing well, with millions of units being sold nationwide through big box stores. My design patent was issued a year ago. I have not notified the company of their infringement so as to not trigger a declarative judgement (these guys will be aggressive in their response to whatever I do).

Leaving out any concerns about inventive ownership or assignment of rights (which I have already researched), my question is: Do I gently suggest a licensing arrangement or to I wait until I have enough funds to go at them will full platoon of attys?

The DJ issue has me thinking it will be hard to dislodge an irritable infringer without repercussions...

I've delt with the  fact that I was outmaneuvered, and hold no animosity. Now it is about exploiting the asset of the design patent to the highest possible profit.

[JimIvey]

What you want is some sort of letter that triggers treble damages for willful continued infringement but does not give sufficient apprehension to justify a Declaratory Action case.  Experienced litigators can help you walk that fine line.

Regards.

[docmiata]

Thanks, Jim - that is the sort of strategic direction I was seeking. I appreciate your weighing in.

[Isaac]

What you want is some sort of letter that triggers treble damages for willful continued infringement but does not give sufficient apprehension to justify a Declaratory Action case.  Experienced litigators can help you walk that fine line.

Perhaps it is possible to walk this line in an initial contact letter, but at least as soon as the possible infringer is put in the position of deciding whether or not to pay for a license and whether some fee is reasonable, jurisdiction for DJ probably exists.  The facts in the OP's post suggest that DJ jurisdiction will be exist sooner rather than later in the negotiation process.

[bleedingpen]

What you want is some sort of letter that triggers treble damages for willful continued infringement but does not give sufficient apprehension to justify a Declaratory Action case.  Experienced litigators can help you walk that fine line.

Perhaps it is possible to walk this line in an initial contact letter, but at least as soon as the possible infringer is put in the position of deciding whether or not to pay for a license and whether some fee is reasonable, jurisdiction for DJ probably exists.  The facts in the OP's post suggest that DJ jurisdiction will be exist sooner rather than later in the negotiation process.

It is possible to walk this line, but it is very difficult.

Furthermore, I believe DJ jurisdiction exists on the basis of ownership of the design patent anyways. 

Bottom line, regardless of the letter that is sent, I think the former employer has DJ jurisdiction. 

If you don't have the funds to go through some form of a lawsuit, then you really run the risk of having to give a covenant not to sue to get rid of a DJ action if the former employer files one, and then your design patent is basically worthless.