While the vast majority of patent law is strictly federal, there are matters of state law. Even most patent attorneys in Florida are unaware of our Patent Troll Statute. Florida Statutes Section 501.991 through 50.997 (Patent Troll Prevention Act) seeks to limit frivolous litigation. For instance, Florida’s Patent Troll Statute provides:
501.993 Bad faith assertions of patent infringement.—A person may not send a demand letter to a target which makes a bad faith assertion of patent infringement.Florida Statute 501.993
For instance, Florida provides a private right of action for violations which include:
(1) Equitable relief;
(2) Actual damages; and
(3) Costs and fees, including reasonable attorney fees; and
(4) Punitive damages in an amount not to exceed $75,000. However, such punitive damages may only be awarded if the court determines that the person asserting the patent infringement claim has repeatedly violated this part.Florida Statute 501.995
Consequently, Florida’s Patent Troll Statute provides an additional layer of protection for Florida organizations.
Exceptions to Florida’s Patent Troll Statute
While Florida’s Patent Troll Prevention Act does not apply to universities or their technology transfer offices, what if the exclusive licensee of the university technology makes the demand? Moreover, what if the university makes the demand on behalf of a licensee? The university systems license many technologies to private industry. Accordingly, a patent attorney not licensed in Florida may be unaware and/or unqualified to fully counsel a patent client on these matters.
Consequently, a patent attorney licensed in Florida will consider both federal and state law. In addition, many intellectual property disputes include the following state-court matters:
- Non-compete agreements;
- Assignment of patent rights;
- Confidentiality and trade secrets; and
- Shop rights in patentable inventions.
Accordingly, a lead attorney on a controversy or litigation must understand all available remedies and liabilities. While the $75,000 punitive damages award in the Florida Patent Troll Statute does not seem like much money, it is tacked onto other available remedies. In conclusion, always check with state-admitted counsel, even if the matter is primarily federal in nature.