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3 Ways Of Patent Misuse You Must Know

3 Ways Of Patent Misuse You Must Know

Out of the possible defense strategies that can be considered during a patent infringement case and litigation, patent misuse can be considered the most powerful and assertive patent infringement defense. The reason for patent misuse being a great patent infringement defense lies in the fact that it renders the owner of the patent in question quite powerless in terms of managing to obtain any positive outcome out of the infringement suit. 
Furthermore, it also renders the patent itself as useless, and may be revoked regardless if it was already protected under proper registration and United States trademark laws. Patent misuse refers to certain types of prohibited behavior undertaken by the owner of the patent seeking infringement action. Generally speaking, there are three ways in which a patent owner can commit patent misuse:
         The patent owner or holder commits violations of the antitrust laws
         The patent owner or holder improperly or willfully expands the scope or claims of the patent with ill intentions.
         The patent owner or holder is found to commit inequitable conduct in obtaining a patent and abusing the inherent rights granted upon such issuance
It is the responsibility of the defendant and his/her patent attorneys to appropriately and vehemently prove that the plaintiff and/or owner of the patent is guilty of patent misuse in order to render the patent infringement suit invalid. Furthermore, the patent in question will be considered to be unenforceable as a result of patent misuse. In many cases, however, the patent will only be denied on a temporary basis. 
The patent may be reinstated after the finding of patent misuse as long as the practices are abandoned and correcting any ill effects of such misuse. However, if the patent infringement defense can prove that the patent misuse occurred in the process of obtaining the patent rights, the patent will not be reconsidered and will be rendered as void and canceled. It is important to note that the patent infringement defense of patent misuse can still be enforced, regardless if such misuse actually harmed the defendant in any way by the abuse of the patent rights. 
This also extends to the fact that if the infringement case is valid, and the patent was in fact infringed, the patent owner will not be able to retain the inherent patent rights and be compensated due to abuse and patent misuse. An example that would constitute patent misuse would be if a person or company purchases many patents regarding distinct and widely used products, such as a water pump. The owner of these patents could possibly establish a type of monopoly on water pumps, for it renders it impossible for others to produce a similar product without infringing on the patents. 
Though there is nothing wrong in owning various patents to a particular type of product, it can be deemed that such a practice is for the purpose of establishing a type of monopoly, which would allow the owner of these patents to enact infringement lawsuits to anyone developing a water pump. This would be grounds for a violation of antitrust laws, and also be considered patent misuse. 
An example of patent misuse expanding the scope of patent rights and protection could be if the owner of a patented product or owner enters a licensing agreement with another party, and forces them to sign the contract stating that royalties are to be paid beyond the life or term of the patent. This is an example of willfully expanding the scope of a patent for ill purpose and willful intention, and thus is a form of patent misuse.

Using Patent Invalidation As A Defense

Using Patent Invalidation As A Defense

 

In the case that a patent infringement case be brought to the courts, the defendant and his/her patent attorneys have several options present to consider in rendering that the use of the patenting product or invention was not done under infringement provisions, and in turn, did not violate any patent infringement laws. One of the most commonly sought and applied defenses are patent invalidation. 

The United States Patent and Trademark Office may grant patents given that the applicants meet the application and registration requirements. However, the Office in certain circumstances may encounter applications for patent that may currently still be in use, or still are protected under the patent term. Extenuating situations may inevitably lead to patent infringement lawsuits. 

The defendant in a patent infringement lawsuit may confer with his/her appointed attorney to apply the concept of patent invalidation. This type of infringement defense encompasses various criteria under federal provisions that may not only question the patent validity of an invention, but may also render the patent as invalidated. Some examples of patent of invalidation include:

         The invention in question that is claimed under the patent is not considered to be novel, and is present in prior art. In other words, the invention is not considered to be new as it has been employed in the past as recorded through records and such evidence. The invention lacking novelty and exhibiting prior use and such knowledge was not disclosed by the plaintiff, it can be grounds to denounce patent validity.

         The claims of the patent do not actually comprise what can be considered an invention. Certain countries have specific regulations and definitions as to the criteria of a patentable invention, and what is outlined in the claims of the patent are not in accordance to an invention according to patent laws of that particular country, thus providing grounds for patent invalidation.

         Patents are generally granted to the first and real inventor of the product or invention. The patent in question and the current holder of the patent is not the actual inventor of the patented material or device. If the owner of the patent can be proven to have acquired the patent wrongfully, it may be null the patent validity of that invention. Furthermore, if the patent holder or owner can not provide for sufficient knowledge of the invention itself, or disclose for the proper identity of the true inventor of the patent, it can form the basis of patent invalidation.

         Insufficient disclosure regarding the invention can also be construed as patent invalidation. It is under law that a patent shall be granted, as long as all the pertaining knowledge and information regarding the invention is disclosed to the public. Failure to provide all of the information required under law may deny the patent validity of that invention. The disclosure of information can include the following:

    All material information relating to the invention

    Best mode or method to produce the invention

    All material art known to the inventor

    All information regarding the patent validity of the invention, such as prior use or descriptions of the invention more than one year prior to the filing date for patent registration

  Any information provided that is considered to be false or with the intent to deceive in accordance to these provisions can also be grounds for patent invalidation

         The claims as provided by the patent do not fully or successfully describe the invented product or innovation

         Patent validity may be disputed under United States patent laws under the provision giving consideration and preference to the inventor first conceptualizing the innovation under the "first to invent" statute.

         The patent holder failed to appropriately finish or comply with all the requirements of the patent application and registration procedures under United States patent laws. This is grounds for patent invalidation. 

Under the United States patent laws, there is a grace period on one year in which an inventor can lawfully submit for a patent application during which time the invention had already been published or made public. Any application after the one year expiry period can also be held to dispute the patent validity of that particular innovation or invention.

Application of the Repair Doctrine

Application of the Repair Doctrine

Patent infringement defenses are various and are different in the scope of their applications. For patent owner to consider filing a lawsuit of patent infringement, it is important that he/she and his/her team of patent attorneys be fully aware of the possible defenses the other side may bring into the case. Patent laws and regulations may often be simple to understand at fair glance, however, their applications in actual infringement action lawsuits and litigation can prove to transform the legislation from simple and understandable to confusing and complex. 
In certain cases, there aspects of the law that may be used effectively as defense to an infringement case that is not entirely obvious. Such a instance is evident with the repair doctrine, also known as the doctrine of repair and reconstruction. This type of patent infringement defense is typically used or applied when a case of indirect patent infringement or induced patent infringement is introduced. 
Repair doctrine also applies to what is considered as a combination patent, where a combination of parts, in their assembled state, create an innovation that is eligible for and granted patent rights. However, when each component is separate, or not part of the completed invention, each part is not patented under the combination patent because of exclusions or ineligibility by proper patent laws. Therefore, the combination patent only protects the completed or assembled combination of those parts. 
The patent infringement action arises when a lawful purchaser of a combination patent product or invention uses replacement parts to repair the innovation. Under patent laws, the transaction of sale of the product from the patent owner or licensed party to the purchaser or consumer, it is implied that the right to repair such product is granted, regardless of where or from whom the replacement parts are purchased. In other words, the replacement parts do not need to be purchased from the patent owner or inventor. 
This is what is referred to as repair doctrine. Patent infringement does not apply because of the fact that the patent owner does not have exclusive rights to the components of the combination or assembled patented invention; the patent only applies to the finished product. The repair doctrine is extended to also include if such repair or replacement of components actually modifies the original patented product or design. The repair doctrine protects the consumer from direct patent infringement, while concurrently protecting the third party selling the replacement parts from indirect patent infringement. 
However, patent infringement can still be applicable if the repair or replacement of the components of a combination patent invention occurs before those components have run their course or have been rendered inoperable. Patent holders and owners have pushed to limit the extent to which repair doctrine can be applied, and is now solely used to refer to worn out or inoperable components. However, in recent years, the idea of repair doctrine only applying to worn out parts or components has been steadily rejected and the idea that any readily replaceable part may be repaired or replaced at any given time, without inducing any kind of patent infringement. 
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