MADISON, Wis. (Legal Newsline) -- A bill targeting so-called "patent trolls" cleared the Wisconsin Senate last week.
Senate Bill 498 unanimously passed the state chamber Tuesday.
The bill would regulate written communications attempting to enforce or assert rights in connection with a patent or pending patent -- more commonly referred to as "demand letters."
Under the bill, such "patent notifications" must contain certain information, including the number and a copy of each patent or pending patent that is the subject of the patent notification; an identification of each patent claim being asserted and the target's product, service, process or technology to which that claim relates; and the basis for each theory of each patent claim being asserted and how that claim relates to the target's product, service, process or technology.
A patent notification may not contain false, misleading or deceptive information, under the bill.
SB 498 also would provide a 30-day opportunity for a person to supplement a patent notification with any required information the person fails to include in the initial notification.
In addition, the bill would allow the state Department of Agriculture, Trade and Consumer Protection, or DATCP, or the attorney general to investigate an alleged violation of the bill's requirements.
It would authorize the attorney general to initiate a court action for an injunction of a violation of the bill's requirements, and in such an action, the bill would authorize the court to make any necessary orders to restore to any person any pecuniary loss the person may have suffered as a result of the violation.
SB 498 also would allow the attorney general to seek a forfeiture to the state of up to $50,000 for each violation of the bill's requirements.
The bill further would create a private right of action for a target or other person aggrieved by a violation of its requirements.
The target or other person may seek an injunction restraining further violation and may recover an award of damages, an award of costs and reasonable attorney fees, and an award of punitive damages not to exceed $50,000 for each violation or three times the aggregate amount of actual damages and costs and attorney fees awarded by the court, whichever is greater.
An amendment was made to the bill that would exempt health care or research institutions that receive federal funds or have annual expenditures of at least $10 million, or an organization owned, controlled or operated by such an institution.
The bill has been sent to the state Assembly, which now needs to approve the measure before sending it to Gov. Scott Walker's desk.
The bill is virtually identical to another piece of legislation, Assembly Bill 656, which passed the Assembly late last month.
"As new technology develops, this type of predatory behavior will persist unless something is done to level the playing field," state Rep. Adam Neylon, R-Pewaukee and AB 656's author, said at the time.
"We must protect the innovation leading to job creation, without over regulating the process so companies or institutions making a legitimate claim are protected."
From Legal Newsline: Reach Jessica Karmasek by email at firstname.lastname@example.org.