A practice referred to as “patent rolling” may be trying to roll over unsuspecting architecture firms, according to a notice from the AIA’s general counsel.

The firms first are sent a letter explaining that they may be using scanner/copier technology that infringes upon a patent. The letter states that if the firm would kindly pay a licensing fee of $900 to $1,200 per employee, the patent owner will provide a license.

If no response, a second letter is sent from a law firm of Farley Daniels in Texas. If no response, a third letter indicates litigation may be in the offing.

The AIA is hearing only snippets of this practice and is uncertain how prevalent it might be. No suits have been filed to indicate the depth or seriousness of these claims. The facts are still being collected.

“Ideally, one would expect the copier/scanner manufacturers to take the lead in challenging the infringement claims,” the AIA’s note stated. “The manufacturers are aware of the issues, but have been slow to respond. It has been suggested — although we cannot confirm this approach ourselves — that any businesses who receive an infringement letter should contact the appropriate manufacturer and ask to be indemnified if sued.”

If you have questions or would like to discuss the situation, or if you have information to share, please contact Jay Stephens, general counsel, at the AIA.

Jay A. Stephens, Hon. AIA
Vice President and General Counsel
The American Institute of Architects
1735 New York Avenue, N.W.
Washington, D.C. 20006
(202) 626-7379

The AIA’s note indicates that the situation developed when a portfolio of patents were sold to another firm, which split those patents based upon its geographic and industry requirements. With the split, the rights to the patents also were reassigned.

Since December, small and medium-size firms were contacted through the pattern of patent infringement letters mentioned above.

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