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2018 Mississippi Code
Title 75 - Regulation of Trade, Commerce and Investments
Chapter 24 - Regulation of Business for Consumer Protection
Bad Faith Assertions of Patent Infringement
§ 75-24-353. Bad faith assertions of patent infringement; exemptions

Universal Citation: MS Code § 75-24-353 (2018)
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  • (1) It is a violation of Sections 75-24-351 through 75-24-357 for a person, in connection with the assertion of a United States patent, to send, or cause any person to send, any written or electronic communication that states that the intended recipient or any affiliated person is infringing or has infringed a patent and bears liability or owes compensation to another person if:

    • (a) The communication threatens litigation if compensation is not paid or the infringement issue is not otherwise resolved and there is a consistent pattern of such threats having been issued and no litigation having been filed;

    • (b) The communication falsely states that litigation has been filed against the intended recipient or any affiliated person; or

    • (c) The assertions contained in the communication lack a reasonable basis in fact or law because:

      • (i) The person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipient or any affiliated person;

      • (ii) The communication seeks compensation for a patent that has been held to be invalid or unenforceable in a final, unappealable or unappealed judicial or administrative decision;

      • (iii) The communication seeks compensation on account of activities undertaken after the patent has expired; or

      • (iv) The content of the communication fails to include the information necessary to inform an intended recipient or any affiliated person about the patent assertion by failing to include any one of the following:

        • 1. The identity of the person asserting a right to license the patent to or enforce the patent against the intended recipient or any affiliated person;

        • 2. The patent number issued by the United States Patent and Trademark Office alleged to have been infringed; or

        • 3. The factual allegations concerning the specific areas in which the intended recipient or affiliated person’s products, services, or technology infringed the patent or are covered by the claims in the patent.

  • (2) It is not a violation of Sections 75-24-351 through 75-24-357 for any person who owns or has the right to license or enforce a patent to:

    • (a) Advise others of that ownership or right of license or enforcement;

    • (b) Communicate to others that a patent is available for license or sale;

    • (c) Notify another of the infringement of the patent; or

    • (d) Seek compensation on account of past or present infringement, or for a license to the patent, if the person is not acting in bad faith.

  • (3) The provisions of Sections 75-24-351 through 75-24-357 shall not apply to any written or electronic communication sent by:

    • (a) Any owner of a patent who is using the patent in connection with substantial research, development, production, manufacturing, processing or delivery of products or materials;

    • (b) A state institution of higher learning;

    • (c) An agency of the State of Mississippi;

    • (d) A technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.;

    • (e) Any person that has licensed patent rights from a state institution of higher learning, an agency of the State of Mississippi, or a technology transfer organization that is owned by or has a written affiliation agreement, a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq., provided that the ownership of the patent rights remains with the state institution of higher learning, the agency of the State of Mississippi, or the technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; or

    • (f) Any person seeking a claim for relief arising under 35 USC Section 271(e)(2) or 42 USC Section 262s.

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