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[TataBox]

Hypo:  Patentee writes letter inquiring whether manufacturing company is using his patented method.  At this stage in the process, I would assume an infringement opinion is necessary under the circumstances, as it still has some play under Knorr right?  However, what if the method used in the manufacturing company is proprietary and kept as a trade secret.  What then?

Regards,

[Wiscagent]

"I would assume an infringement opinion is necessary ..."

Necessary for whom, the manufacturer?  While it may not be the most wise move in many situations, why couldn't the manufacturer simply ignore the letter?  Can't the manufacturer just wait until (if ever) patentee actually files suit, and then respond? 

[TataBox]

Is there not a notice issue and willful infringement?  I have read Seagate, but I still think it prudent to have an opinion even though it may not carry as much weight as it did previously.


Regards,

[Wiscagent]

"I still think it prudent to have an opinion ..."

For whom to have an [infringement] opinion?

[TataBox]

manufacturer.

[Wiscagent]

The first action by the manufacturer should be to determine if the potential infringement is a significant risk to the business.  If the patentee is just some little guy blowing smoke, and/or there is an easy work-around for a minor part of the process, it might not be worth investing the attorney, management, and engineering time and money to conduct a proper infringement inquiry.  If there seems to be a legitimate threat to the business, of course the business should pay for an infringement (and probably a validity) analysis.

If my lawyer started talking about Knorr and Seagate, I'd probably get a new lawyer.  It's more important for me to grasp the level of the risk to my business than to spend money on a defense strategy for a situation that will probably never arise.

[TataBox]

I have to disagree.  I think that all avenues should be explored.  Your job is to protect the clients interests.  Part of your defense strategy involves weighing case law in determining whether a particular course of action is prudent.  You weigh that with the cost and risk associated. 

When you say "probably," that becomes the million dollar question.  I would rather have my client prepared if that situation arises, otherwise the downside could be tremendous.

Regards,

[Wiscagent]

"Your job is to protect the clients interests."

I agree with that.  And running up unnecessary legal bills to respond to a non-existent law suit works against your client's interest.

When I write "probably" it is because few things are certain in life, law and business.  And at every turn you have to use your judgment on how to proceed.  You "would rather have [your] client prepared if that situation arises, otherwise the downside could be tremendous."  That's true.  It's also true that in some situations the consequences of being found to be infringing a patent are relatively minor. Furthermore, if the business expends too much time, money, emotion, and effort fighting unlikely or minor threats, the business will die.

Each threat has to be evaluated, and the response should be measured, based on a formal or informal cost / benefit / risk analysis.

Respectfully yours.