IP CEASE AND DESIST LETTERS: MINIMIZING DECLARATORY JUDGMENT RISKS

While cease and desist letters are useful and cost-effective tools to enforce intellectual property rights, they are not without potential pitfalls. The most overlooked risk is being subjected to a declaratory judgment action in an unfavorable forum. Under the current law, the threshold for triggering declaratory judgment jurisdiction is low. Therefore, prior to sending a cease and desist letter, consideration should be given to the: (1) wording of the letter, (2) ability to combat an anticipatory suit, (3) extent to which personal jurisdiction can be established, and (4) venue, particularly for patent claims in light of the recent Supreme Court decision in TC Heartland. This article, first published by the New York State Bar Association in its Bright Ideas publication, Winter 2017, Volume 26, Number 3, provides an in-depth analysis of these strategic considerations and guidance for the drafting of intellectual property cease and desist letters.