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First Sale Doctrine Explained

First Sale Doctrine ExplainedThough patent infringement may prove to be a serious offense, and cases will undoubtedly be brought up in the courts simply because of the nature of patents and the legislature governing them. However, there are several defenses that are employed by those facing patent infringement lawsuits that may prove to effective in swaying the court’s decision in their favor. One of these defenses is referred to as first sale doctrine. First sale doctrine is a common defense used in any litigation involving the infringement of intellectual property. In other words, it is not strictly applicable to patents, but also to copyrights and trademarks. 

Commonly, when it relates to patents, first sale doctrine will also be referred as exhaustion doctrine, or doctrine of exhaustion for the purpose of avoiding confusion when differentiating between the different types of intellectual property. First sale doctrine is a regulation that implies a patent license with certain sales of a patented product by the patent owners or inventors. Exhaustion simply refers to the idea that a patent owner will essentially “exhaust” or lose certain rights and protection after their patented product is initially sold or used at the commercial level. The patent owner will still have certain rights and protections as applicable by patent laws, but certain control over those rights will be exhausted once that product, invention, or innovation enters the commercial market and used by consumers. 
It is also important to note that once a patent right is considered to be under “exhaustion,” that the same product is to be considered as such at an all encompassing level. In other words, if those rights become “exhausted” as considered by the rule of first sale doctrine in a particular area, the same will be enforced in other areas as well. Because first doctrine sale or the exhaustion doctrine is often applied to imply a license through the sell of a patented product, it will also be used with another defense to further provide for a stronger argument. The exhaustion doctrine is very commonly used with claims of patent-related estoppel. 
The concept of exhaustion doctrine seems to be quite ordinary and easily applicable in litigation procedures, but often enough, there are other issues that are considered that will render first sale doctrine more complicated than it seems. In certain cases, patent lawyers will often analyze the actual sale of patented product to a particular party in order to evaluate if such a transaction was a real sale versus an implied license agreement. If there is no sale to be accounted for, then first sale doctrine can be used as a defense in the sense that, under its definition, those rights have not been “exhausted” and the owner of the patent may then eligible to file suit for patent infringement. The first sale doctrine can be used on both sides of a patent infringement suit, as long as the patent lawyers have the knowledge and skill to apply the exhaustion doctrine in the favor of their clients.

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.