Treble Damage Waiver

[crackeur@comcas]

What is the name of your state? California and Washington

If a big company is interested in acquiring patents (potentially high value) from a small company, would it be fair for that big company to ask that small company to sign NDA containing clauses that waive the treble damage (for willful infringement)?

 

[divgradcurl]

Whether or not it is "fair" is really dependent on the situation -- what does your lawyer say about this?

Presumably the big company already makes products that may infringe on your patents, or is about to do so, and that's why they are interested in the patents. But by entering into licensing negotiations, they are obviously "on notice" as to the existance and scope of your patents, so if licensing negotiations were to break down, they could be on the hook for willful infringement. And they want to try and avoid that, should licensing (or sale) negotiations fail, and you decide to sue them in court.

Part of your decision making process will be, if we don't sell to these guys, are we going to sue them? How much are we willing (or able) to spend in a lawsuit? Willfulness can be tough to prove, so it's not a gimme even in a slam-dunk infringement case.

It may be that this is not that much to give up if negotiations are going well, and there is a good chance that you will end up selling -- but you want to think it through, preferably with the advice of counsel.

 

[crackeur@comcas]

treble damage waiver

Interesting..

if we don't sell to them, I don't think they are infringing... then would u recommend that
we accept the treble damage waiver?

 

[divgradcurl]

Interesting..

if we don't sell to them, I don't think they are infringing... then would u recommend that
we accept the treble damage?

I can't make that recommendation -- I am not your lawyer, I do not have access to all of the facts of the situation. I provided some information that may help inform you decision, but, as always, it is recommended that you discuss this question with your own attorney, who can review all of the facts of your specific situation and advise you accordingly.