11 Patent Misuse

Subject(s):

European Union — Copyright — Licensing — Rights — Technology transfer agreements — United States

This chapter explains the patent-misuse doctrine, which all US patent litigators and antitrust lawyers working in the patent space should understand. Under that doctrine, if a patentee extends the scope of his or her lawful monopoly with anticompetitive effect, the patent is unenforceable until the patentee purges the effects of the misuse. Misuse features routinely as an affirmative defence in patent-infringement lawsuits. Although the Federal Circuit has curtailed the defence, the US Supreme Court breathed new life into it in its 2015 decision in Kimble v. Marvel. EU law has no close parallel to the misuse doctrine. The chapter begins with a concise articulation of the rules governing misuse today. It concludes by historically tracing the doctrine’s evolution and offers some thoughts on how best to understand it.