2017 ORS 646A.810¹
Patent infringement claim made in bad faith
  • enforcement as unlawful practice
  • limitations
  • rules

(1) As used in this section:

(a) “Affiliate” means a person that directly, or indirectly through one or more intermediaries, controls, is controlled by or is under common control with another person.

(b) “Complaint” means a document or a copy of a document that a person or the person’s affiliate:

(A) Files with a court, an arbitration panel or another body with power to adjudicate a dispute over patent rights; and

(B) Serves, sends or otherwise communicates to a recipient in order to commence a judicial, arbitration or administrative proceeding for patent infringement against the recipient.

(c) “Demand” means an oral or written communication that alleges, asserts or claims that a recipient has infringed or has contributed to infringing a patent or the rights that a patentee has under a patent or has granted to an assignee or a licensee.

(d) “Patentee” has the meaning given that term in 35 U.S.C. 100, as in effect on March 3, 2014.

(e) “Person” has the meaning given that term in ORS 646.605 (Definitions for ORS 336.184 and 646.605 to 646.652).

(f) “Prosecuting attorney” means the Attorney General or the district attorney of any county in which a violation of this section is alleged to have occurred.

(g) “Recipient” means a person that receives a demand and:

(A) Resides in this state;

(B) Maintains a place of business or transacts business within this state; or

(C) Is a body, officer or agency acting under the statutory authority of this state or under the legal authority of a political subdivision of this state.

(2) A person or the person’s affiliate may not communicate a demand, or cause another person to communicate a demand, to a recipient if in the demand the person or the person’s affiliate alleges, asserts or claims in bad faith that the recipient has infringed or contributed to infringing a patent or the rights that a patentee has, or has granted to an assignee or licensee, under the patent.

(3) If a prosecuting attorney receives one or more accusations from a recipient or recipients that a person or the person’s affiliate has violated subsection (2) of this section, the prosecuting attorney may execute and serve an investigative demand on the person or the person’s affiliate under ORS 646.618 (Investigative demand) and may take action against the person or the person’s affiliate under ORS 646.632 (Enjoining unlawful trade practices) for engaging in an unlawful trade practice.

(4) A court may consider one or more of the following conditions as evidence that a person or the person’s affiliate has, in bad faith, alleged, asserted or claimed an infringement of a patent or rights that a patentee, assignee or licensee has under a patent:

(a) The demand required the recipient to respond or to pay a license or other fee within a period of time that a reasonable person would consider to be unreasonably short.

(b) The demand did not include:

(A) The patent number for the patent that the person or the person’s affiliate alleges, asserts or claims that the recipient infringed;

(B) Current and accurate contact information for the patentee, assignee or licensee, including a name, address and phone number or other contact information that would enable the recipient to identify and communicate with the patentee, assignee or licensee; and

(C) A statement of facts, together with an explanation or a description of the facts that would enable a reasonable person to understand the basis of the allegation or claim that the recipient has infringed the patent or the rights of the patentee, assignee or licensee under the patent.

(c) The person or the person’s affiliate failed to provide the information described in paragraph (b) of this subsection to the recipient within a reasonable time after the recipient requested the information.

(d) The person or the person’s affiliate, before communicating the demand:

(A) Failed to compare the claims in the patent to the features or specifications of the recipient’s product, service or technology that the person or the person’s affiliate alleges, asserts or claims is an infringement of the patent or the rights of the patentee, assignee or licensee under the patent; or

(B) Conducted the comparison described in subparagraph (A) of this paragraph, but in a way that did not enable the person or the person’s affiliate to specifically identify the infringing features or specifications of the recipient’s product, service or technology.

(e) The person or the person’s affiliate offered to license the patent for an amount that a reasonable person with knowledge of the market value of a license for the invention that is covered by the patent would consider unreasonable.

(f) The person or the person’s affiliate knew or should have known at the time the person or the person’s affiliate communicated the demand that the allegation, assertion or claim of infringement was without merit or was deceptive.

(g) The person or the person’s affiliate previously communicated a demand or filed a complaint based on the same or a similar allegation, assertion or claim and:

(A) The demand did not include the information described in paragraph (b) of this subsection; or

(B) A court, an arbitration panel or another body with power to adjudicate a patent dispute dismissed the complaint as frivolous or without merit at any point during a proceeding before the court, the panel or the body.

(h) The person or the person’s affiliate engaged in other conduct that the Attorney General by rule identifies as evidence of alleging, asserting or claiming an infringement in bad faith.

(5) A court may consider one or more of the following conditions as evidence that a person or the person’s affiliate has, in good faith, alleged, asserted or claimed an infringement of a patent or rights that a patentee, assignee or licensee has under a patent:

(a) The demand does include the information described in subsection (4)(b) of this section.

(b) The person or the person’s affiliate provided the information described in subsection (4)(b) of this section to the recipient within a reasonable time after the recipient requested the information, if the demand did not include the information.

(c) The person or the person’s affiliate, before communicating the demand, attempted to establish that an infringement had occurred by comparing the claims in the patent to the features or specifications of the recipient’s product, service or technology that the person or the person’s affiliate believes is an infringement of the patent, or the rights of the patentee, assignee or licensee under the patent, and specifically identifying the infringing features or specifications of the recipient’s product, service or technology.

(d) The person or the person’s affiliate, after conducting the comparison described in paragraph (c) of this subsection, attempted in good faith to negotiate a settlement or a license for the patent with the recipient.

(e) The person or the person’s affiliate has made a substantial investment in using or prosecuting the patent or in producing or selling a product, service or technology covered by the patent.

(f) The person or the person’s affiliate is:

(A) Named in the patent as an inventor or an assignee of the inventor;

(B) An institution of higher education; or

(C) An organization that an institution of higher education owns or is affiliated with and that has as the organization’s principal purpose the transfer of technology from the institute of higher education.

(g) The person or the person’s affiliate has:

(A) Previously and successfully enforced the patent, or the rights the patentee, an affiliate or a licensee has under the patent, before a court, an arbitration panel or another body with power to adjudicate a patent dispute; and

(B) Otherwise demonstrated integrity and good faith in business practices related to the patent or previous attempts to enforce the patent or the rights the patentee, an assignee or a licensee has under the patent.

(h) The person or the person’s affiliate engaged in other conduct that the Attorney General by rule identifies as evidence of alleging, asserting or claiming an infringement in good faith.

(6) A violation of subsection (2) of this section is an unlawful practice under ORS 646.608 (Additional unlawful business, trade practices) that is subject to an action under ORS 646.638 (Civil action by private party). Notwithstanding the definition of “person” in ORS 646.605 (Definitions for ORS 336.184 and 646.605 to 646.652), a recipient is a person for the purpose of bringing an action as a plaintiff under ORS 646.638 (Civil action by private party).

(7) This section does not limit or affect:

(a) A right that this state, a political subdivision of this state, an agency, officer, employee or agent of this state or a political subdivision of this state or any other person may have with respect to a patent or rights granted under a patent; or

(b) Any remedy for patent infringement that a court, an arbitration panel or another body with power to adjudicate a dispute over patent rights may grant to this state, a political subdivision of this state or an agency, officer, employee or agent of this state or a political subdivision of this state or any other person.

(8) The Attorney General may adopt rules necessary to implement the provisions of this section. [2014 c.19 §2; 2017 c.17 §51]

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Law Review Cita­tions

52 WLR 451 (2016)

(formerly 646.315 to 646.375)

Notes of Decisions

Where purchaser fails to provide notice of condi­tion requiring repair, presump­tion does not arise that repair time exceeding 30 business days demonstrates inability of manufacturer to conform vehicle. Pavel v. Winnebago Industries, Inc., 127 Or App 16, 870 P2d 856 (1994)

Repair time exceeding 30 business days as evidence of inability to conform vehicle applies only to presently existing defect. Pavel v. Winnebago Industries, Inc., 127 Or App 16, 870 P2d 856 (1994)

Law Review Cita­tions

19 WLR 329 (1983)

1 Legislative Counsel Committee, CHAPTER 646A—Trade Regulation, https://­www.­oregonlegislature.­gov/­bills_laws/­ors/­ors646A.­html (2017) (last ac­cessed Mar. 30, 2018).
 
2 Legislative Counsel Committee, Annotations to the Oregon Revised Stat­utes, Cumulative Supplement - 2017, Chapter 646A, https://­www.­oregonlegislature.­gov/­bills_laws/­ors/­ano646A.­html (2017) (last ac­cessed Mar. 30, 2018).
 
3 OregonLaws.org assembles these lists by analyzing references between Sections. Each listed item refers back to the current Section in its own text. The result reveals relationships in the code that may not have otherwise been apparent.