Patent misuse
Encyclopedia
In United States patent law
, patent misuse is an affirmative defense
used in patent litigation
when a defendant
has been accused to have infringed
a patent
. It has also been used to mitigate
damages following a finding of infringement or justify a failure to pay contracted-for royalties. This umbrella term usually describes any of the following:
In the United States, a patent is a statutory right that grants the patentee the right to exclude others from making, using, or selling a patented invention
. Under current U.S. patent law it is not patent misuse simply to enforce rights to a patent, in good faith, and enforcement is permissible irrespective of any use or non-use by the owner.
The United States Supreme Court established the underlying "unclean hands
" principle of the patent misuse doctrine in Motion Picture Patents Co. v. Universal Film Mfg. Co. The specific rule that similar misuse of a patent is a defense to an infringement suit comes from Morton Salt Co. v. G.S. Suppiger Co.,
Most types of misuse can be "purged" by abandoning the practice and causing its effects to dissipate.
Fraud or inequitable conduct in patent procurement, however, is not purgeable.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, patent misuse is an affirmative defense
Affirmative defense
A defendant offers an affirmative defense when responding to a plaintiff's claim in common law jurisdictions, or, more familiarly, in criminal law. Essentially, the defendant affirms that the condition is occurring or has occurred but offers a defense that bars, or prevents, the plaintiff's claim. ...
used in patent litigation
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
when a defendant
Defendant
A defendant or defender is any party who is required to answer the complaint of a plaintiff or pursuer in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a criminal statute...
has been accused to have infringed
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
. It has also been used to mitigate
Extenuating circumstances
In law, extenuating circumstances in criminal cases are unusual or extreme facts leading up to or attending the commission of the offense which, though an offense has been committed without legal justification or excuse, mitigate or reduce its gravity from the point of view of punishment or moral...
damages following a finding of infringement or justify a failure to pay contracted-for royalties. This umbrella term usually describes any of the following:
- a violation of antitrust laws
- improper expansion of the scope or term of the patent
- inequitable conduct in the procurement or enforcement of a patent (sometimes termed "non-purgeable misuse").
In the United States, a patent is a statutory right that grants the patentee the right to exclude others from making, using, or selling a patented invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
. Under current U.S. patent law it is not patent misuse simply to enforce rights to a patent, in good faith, and enforcement is permissible irrespective of any use or non-use by the owner.
The United States Supreme Court established the underlying "unclean hands
Unclean hands
Unclean hands, sometimes called the clean hands doctrine or the dirty hands doctrine, is an equitable defense in which the defendant argues that the plaintiff is not entitled to obtain an equitable remedy on account of the fact that the plaintiff is acting unethically or has acted in bad faith with...
" principle of the patent misuse doctrine in Motion Picture Patents Co. v. Universal Film Mfg. Co. The specific rule that similar misuse of a patent is a defense to an infringement suit comes from Morton Salt Co. v. G.S. Suppiger Co.,
Most types of misuse can be "purged" by abandoning the practice and causing its effects to dissipate.
Fraud or inequitable conduct in patent procurement, however, is not purgeable.
Statutory limitation
The scope of the patent misuse doctrine is today limited by (d):See also
- BiopiracyBiopiracy- Biopiracy and bioprospecting :Bioprospecting is an umbrella term describing the discovery of new and useful biological samples and mechanisms, typically in less-developed countries, either with or without the help of indigenous knowledge, and with or without compensation...
- Copyright misuseCopyright misuseCopyright misuse is an equitable defense against copyright infringement in the United States. Under this defense, a copyright infringer may avoid infringement liability if the copyright holder has engaged in abusive or improper conduct in exploiting or enforcing the copyright...
- EvergreeningEvergreeningEvergreening refers to a variety of legal and business strategies by which technology producers with patents over products that are about to expire, retain rent from them by either taking out new patents or by buying out or frustrating competitors, for longer periods of time than would normally be...
- Inequitable conductInequitable conductIn United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
- Patent ambushPatent ambushA patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, which is relevant to the standard, and...
- Patent trollPatent trollPatent troll is a pejorative but questioned term used for a person or company who is a non-practicing inventor, and buys and enforces patents against one or more alleged infringers in a manner considered by the target or observers as unduly aggressive or opportunistic, often with no intention to...
- Submarine patentSubmarine patentA submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, such as several years. This strategy requires a patent system where patent applications are not published. In the United States, patent applications filed before November 2000...