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. Historically, courts were willing to entertain a patent misuse defense for patent owners who never undertook any commercial use and solely sought out infringers. Recent decisions have held it is not patent misuse to enforce rights to a patent, and enforcement is permissible irrespective of any use or non-use by the owner.[1]
The United States Supreme Court established the patent misuse doctrine in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917).
Statutory limitation
The scope of the patent misuse doctrine is today limited by (d):
No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.
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