Pre-filing investigations in patent cases

What is a reasonable inquiry into the facts and law in a patent case?

Rule 11 of the Federal Rules of Civil Procedure requires an attorney to conduct a reasonable inquiry into the laws and facts before filing a pleading in a court and to certify that the claims contained in the pleading are not frivolous, legally unreasonable, without factual foundation or asserted for improper purposes. This inquiry must be undertaken before the suit is filed, not after. The question is, “What is a reasonable inquiry into the facts and law in a patent case?”

The scope of a patent’s legal protection is defined by the claims. Therefore, a pre-filing investigation in a patent case should focus on the scope and content of the claims as applied to the accused product. A good first step is to interpret the claims of the patent as their exact language will, in all likelihood, become a key issue in the litigation. Accordingly, it is appropriate for counsel to undertake an analysis of patent claim scope prior to filing.

Contributing Author

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Craig Metcalf

Craig Metcalf is a Shareholder with Kirton McConkie. His practice emphasizes intellectual property and appeals as well as mediation and arbitration. He can be reached...

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