Patent Law

Greg Wesner and Mike Keyes of K&L Gates LLP wrote the above-titled article in the Winter 2009 issue of the ABA's Intellectual Property Litigation newsletter.

In their discussion they state that prior to the MedImmune v. Genentech decision the owner of a trademark was able to send a potential infringer a demand letter "without triggering federal court declaratory-judgment jurisdiction, so long as the letter did not create a 'reasonable apprehension of suit.'?  This case -- for patent, not trademark infringement -- has changed a standard in place for over 20 years.

The Court in MedImmune v. Genentech, ruled that a patent licensee could sue its licensor to obtain a declaration that the licensed patent is invalid or otherwise unenforceable without first repudiating the license.  "The U.S. Supreme Court jettisoned the 'reasonable apprehension' declaratory-judgment standard in favor of a more lenient standard that looks to the 'totality of the circumstances' in order to determine if there is a 'concrete' dispute between the parties."

Read the full article to learn about the consequences for both patent and trademark litigation.  The newsletter is available to ABA Section of Litigation members here.