2016 Indiana Code TITLE 24. TRADE REGULATION ARTICLE 11. BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT CHAPTER 3. ASSERTIONS OF PATENT INFRINGEMENTS IN BAD FAITH PROHIBITED
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IC 24-11-3
Chapter 3. Assertions of Patent Infringements in Bad Faith
Prohibited
IC 24-11-3-1
Assertion of claim of patent infringement in bad faith prohibited
Sec. 1. A person may not assert a claim of patent infringement in
bad faith.
As added by P.L.172-2015, SEC.1.
IC 24-11-3-2
Factors as evidence of bad faith
Sec. 2. (a) A court may consider the following factors as evidence
that a person has made an assertion of patent infringement in bad
faith:
(1) The person distributed a demand letter that does not contain
all the following information:
(A) The patent number of the patent that the person claims
is being infringed.
(B) The name and address of:
(i) a patent owner;
(ii) if applicable, any assignee of the patent; and
(iii) if applicable, a patent owner's or assignee's agent who
is retained by the patent owner or assignee to enforce the
patent.
(C) Factual allegations identifying specific areas in which
the target's products, services, and technology infringe the
patent or are covered by the claims in the patent.
(2) The person fails to:
(A) conduct an analysis comparing the claims in the patent
to the target's products, services, and technology; or
(B) identify, if the person conducts an analysis described in
clause (A), specific areas in which the target's products,
services, and technology are covered by the claims in the
patent.
(3) If the demand letter does not contain the information
described in subdivision (1), the person that distributed the
demand letter fails to provide the information within a
reasonable amount of time after the target requests the
information.
(4) The person demands:
(A) payment of a license fee; or
(B) a response from the target;
within an unreasonably short period of time.
(5) The person offers to license the patent for an amount that is
not based on a reasonable estimate of the value of the license.
(6) The claim or assertion of patent infringement is meritless,
and the person knew, or should have known, that the claim or
Indiana Code 2016
assertion is meritless.
(7) The claim or assertion of patent infringement is deceptive.
(8) The person or the person's subsidiaries or affiliates have
previously filed or threatened to file a lawsuit based on the
same or similar claim of patent infringement and the:
(A) filing or threats to file lacked the information described
in subdivision (1); or
(B) person attempted to enforce the claim of patent
infringement in litigation and a court found the claim to be
meritless.
(9) Any other factor the court finds relevant.
(b) A person may not use the failure of a target to request any
information described in subsection (a)(1) that is not contained in the
demand letter as a defense to an action under this article.
As added by P.L.172-2015, SEC.1. Amended by P.L.149-2016,
SEC.73.
IC 24-11-3-3
Factors as evidence of not bad faith
Sec. 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
section 2(a)(1) of this chapter.
(2) If the:
(A) demand letter lacks the information described in section
2(a)(1) of this chapter; and
(B) target requests the information;
the person provides the information to the target within a
reasonable period of time.
(3) The person engages in a good faith effort to:
(A) establish that the target has infringed the patent; and
(B) negotiate an appropriate remedy.
(4) The person makes a substantial investment in the:
(A) use of the patent; or
(B) production or sale of a product or item covered by the
patent.
(5) The person is:
(A) the inventor or joint inventor of the patent; or
(B) if the patent was filed by and awarded to an assignee of
the original inventor or joint inventor, the original assignee.
(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.
(7) Any other factor the court finds relevant.
Indiana Code 2016
As added by P.L.172-2015, SEC.1.
Indiana Code 2016
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