1. No person shall make a bad faith assertion of patent infringement in a demand letter.

2. A court may consider the following factors as evidence that a person has made a bad faith assertion of patent infringement in a demand letter:

Terms Used In Missouri Laws 416.652

  • Evidence: Information presented in testimony or in documents that is used to persuade the fact finder (judge or jury) to decide the case for one side or the other.
  • following: when used by way of reference to any section of the statutes, mean the section next preceding or next following that in which the reference is made, unless some other section is expressly designated in the reference. See Missouri Laws 1.020
  • Litigation: A case, controversy, or lawsuit. Participants (plaintiffs and defendants) in lawsuits are called litigants.
  • person: may extend and be applied to bodies politic and corporate, and to partnerships and other unincorporated associations. See Missouri Laws 1.020

(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, or technology infringe the patent or are covered by the claims in the patent;

(2) 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;

(3) The demand letter demands payment of a license fee or response within an unreasonably short period of time;

(4) The person offers to license the patent for an amount that is not based on a reasonable estimate of the value of the license;

(5) The person, company, or any of its subsidiaries or affiliates has previously presented a demand letter claiming or asserting patent infringement of the same patent under substantially the same circumstances, and a court has entered a final judgment that the demand letter presented a bad faith assertion of patent infringement;

(6) The person attempted to enforce the claim of patent infringement in litigation, and a court found the claim to be brought in bad faith; and

(7) Any other factor the court finds relevant.

3. 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 (1) of subsection 2 of this section;

(2) If the demand letter lacks the information described in subdivision (1) of subsection 2 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 holding 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; and

(7) Any other factor the court finds relevant.

  Previous section
Next section  
 Chapter 416 Contents