GavelThe recently decided case of Hewlett-Packard v. Acceleron (C.A.F.C. 2009-1283) serves as a warning to any patent owner wishing to offer a license to a patent.  If you’re in that position, be careful or you may end up in court.  Here’s why.

In the distant past (which, in this instance, means before 2007) a patent owner actually had to threaten someone with an infringement suit before the target company or individual could race to Federal Court to file a “declaratory judgment action.”  Patent owners thus became careful not to issue threats, but only to inform potential licensees about their patents and offer licenses under the patents.  (After all, courts have long written that a patent is not worth anything unless the owner of the patent has the right to let others know about it.)  For more details about how this standard evolved see the MedImmune and SanDisk cases.

On December 4, 2009, the court in Acceleron changed the standard for bringing a declaratory judgment action.  It held that a lawsuit may be filed by any party who is led to believe that there is an, “intent to enforce a patent”  by another party.  Thus, for patent owners (including universities, research and development companies, and early-stage ventures) there appears to be almost no way to enter into discussions about patent licensing without risk of a declaratory judgment lawsuit, short of having a stand-still agreement before starting discussions.

This threat to patent owners is not academic.  A declaratory judgment action is usually a full patent infringement and validity law suit, and the average cost to defend such a suit is now well over $1 million. The state of the law now:  you cannot be sued for just having a patent, but talking about it can land you in court.

— Lawrence A. Husick, Esq.