40-1-202. Bad faith assertion of patent infringement; prohibited; factors to determine bad faith.

(a) Except as otherwise provided in this article, no person shall make a bad faith assertion of patent infringement as provided in this section.

(b) A court may consider any of the following factors as evidence that a person made a bad faith assertion of patent infringement:

(i) The person issued a demand letter which did not include one (1) or more of the following:

(A) The patent number;

(B) The name and address of the patent owner and assignee, if any;

(C) Specific factual allegations describing the target's product, service or technology that infringes the patent or is otherwise covered by the patent.

(ii) The person did not conduct an analysis comparing the patent to the product, service or technology of the target prior to sending the demand letter or, if an analysis was conducted, the analysis did not identify the specific area that the product, service or technology of the target infringes the patent or is otherwise covered by the patent;

(iii) If a demand letter does not contain all of the information provided in paragraph (i) of this subsection and the target requests the missing information, the person fails to provide the missing information within thirty (30) days;

(iv) The demand letter requires a response or payment of a license fee within a specified time that is less than thirty (30) days;

(v) The person knew or should have known that the claim of patent infringement is unenforceable;

(vi) The claim of patent infringement is deceptive;

(vii) The person making the assertion of patent infringement does not own or have the right to enforce or license the patent;

(viii) The person sent the same or substantially similar demand letter to multiple recipients and made assertions against a variety of products, services or technologies without addressing product, service or technology differences in a reasonable manner;

(ix) The person made a threat of legal action that the person knows or should have known cannot be legally taken or is not intended to be taken;

(x) The person falsely represents in a demand letter that a complaint has been filed with a court alleging patent infringement;

(xi) The claim of patent infringement is based on a patent that has expired or has previously been held invalid or unenforceable in a final unappealable or unappealed judicial or administrative decision;

(xii) Any other factor the court finds relevant.

(c) A court may consider any of the following factors as evidence that a person has not made a bad faith assertion of patent infringement:

(i) The demand letter includes all of the information specified in paragraph (b)(i) of this section;

(ii) If a demand letter does not contain all of the information provided in paragraph (b)(i) of this section and the target requests the missing information, the person provides the missing information within thirty (30) days;

(iii) The person engages in a good faith effort to establish that the target has infringed the patent and to negotiate an appropriate remedy;

(iv) The person has made a substantial investment in the use of the patent or in the production or sale of a product, service or technology covered by the patent;

(v) The person is the inventor or joint inventor of the patent or, if the patent is filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee of the patent;

(vi) The person has successfully enforced the patent or a substantially similar patent through litigation or has demonstrated good faith business practices in previous efforts to enforce the patent.