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ARTICLE · 24 JUNE 2013

Can A Website Disclaimer Prevent Declaratory Judgment Actions In IP Cases? Maybe…Or Maybe Not

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A recent decision from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers.

United StatesIntellectual Property
Foley Hoag LLP
Foley Hoag LLP
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A decision this week from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent (and by implication trademark) holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers. The decision has been argued by some to be an extension of the reasoning of the U.S. Supreme Court earlier this year in Already, LLC v. Nike, in which the Court affirmed the ability of trademark holders to terminate an action challenging the validity of a mark by issuing a covenant not to sue the challenger.

While the possibility of a simple website disclaimer as a shield for trademark holders to insulate their marks from challenge seems enticing, the press for the recent Federal Circuit opinion is overblown and not completely accurate.

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