Disputes
6 min read
The first 48 hours after a letter before action
An infringement letter is designed to make you move quickly. The right response is to move carefully — and there are three things to check before anyone replies.
Tobias Achebe
Partner · Patent litigation
Published
Length
6 min read
In short
Send a holding reply; do not answer the merits on day one.
Check ownership, scope and validity before responding.
Preserve documents and stop internal speculation by email.
Unjustified threats can give you a claim of your own.
Tobias Achebe
Partner · Patent litigation
Published
Length
6 min read
In short
Send a holding reply; do not answer the merits on day one.
Check ownership, scope and validity before responding.
Preserve documents and stop internal speculation by email.
Unjustified threats can give you a claim of your own.
The reply written in the first hour is the one read aloud at trial.
Do not reply the same day
A letter alleging infringement usually sets a short deadline and asks for undertakings: stop selling, deliver up stock, account for profits. The deadline is real, but it is rarely as short as it looks, and a holding reply buys the time needed to answer properly.
Whatever you send becomes evidence. Admissions made in a hurried email, speculation about what an engineer might have copied, or an offer to change the product 'to avoid any argument' will all be read later by the other side's counsel.
Three checks before anyone answers
First, is the right real: registered, in force, and owned by the person writing to you? Second, does it cover what you actually do — read the claims or the specification, not the covering letter. Third, is it valid? A surprising number of patents and marks asserted in letters would not survive a challenge.
Threats can cut both ways
UK law protects businesses from unjustified threats of infringement proceedings for patents, trade marks and designs. A letter that goes too far — particularly one sent to your customers or retailers — can itself be actionable. That changes the balance of a negotiation, and it is worth knowing before you concede anything.
An angry reply cannot be withdrawn. A careful one can always be sharpened later.
What to do next
Forward the letter as soon as it arrives. We will confirm the real deadline the same day and give you a written view on the three checks within 48 hours.
Disputes
6 min read
The first 48 hours after a letter before action
An infringement letter is designed to make you move quickly. The right response is to move carefully — and there are three things to check before anyone replies.
Tobias Achebe
Partner · Patent litigation
Published
Length
6 min read
In short
Send a holding reply; do not answer the merits on day one.
Check ownership, scope and validity before responding.
Preserve documents and stop internal speculation by email.
Unjustified threats can give you a claim of your own.
Tobias Achebe
Partner · Patent litigation
Published
Length
6 min read
In short
Send a holding reply; do not answer the merits on day one.
Check ownership, scope and validity before responding.
Preserve documents and stop internal speculation by email.
Unjustified threats can give you a claim of your own.
The reply written in the first hour is the one read aloud at trial.
Do not reply the same day
A letter alleging infringement usually sets a short deadline and asks for undertakings: stop selling, deliver up stock, account for profits. The deadline is real, but it is rarely as short as it looks, and a holding reply buys the time needed to answer properly.
Whatever you send becomes evidence. Admissions made in a hurried email, speculation about what an engineer might have copied, or an offer to change the product 'to avoid any argument' will all be read later by the other side's counsel.
Three checks before anyone answers
First, is the right real: registered, in force, and owned by the person writing to you? Second, does it cover what you actually do — read the claims or the specification, not the covering letter. Third, is it valid? A surprising number of patents and marks asserted in letters would not survive a challenge.
Threats can cut both ways
UK law protects businesses from unjustified threats of infringement proceedings for patents, trade marks and designs. A letter that goes too far — particularly one sent to your customers or retailers — can itself be actionable. That changes the balance of a negotiation, and it is worth knowing before you concede anything.
An angry reply cannot be withdrawn. A careful one can always be sharpened later.
What to do next
Forward the letter as soon as it arrives. We will confirm the real deadline the same day and give you a written view on the three checks within 48 hours.