Rights:
Term of protection:
The US Regimen contemplates three different kinds of patents, each one with its own characteristics and time of protection, as it can be seen on the following chart:
Rights conferred:
Under the US Regime, the rights conferred to the patentee are the rights to exclude others from:
- Making;
- Using;
- Selling;
- Offering for sale and
- Importing the patented invention
As established by §154(a)(1), for the time of protection of the granted patent: activity prior to issuance that would have resulted in a finding of infringement during the life of the patent is not actionable. It is also unenforceable after it expires.
Geographical scope of protection: The aforementioned rights may be enforced within and throughout the United States. The invention can only be imported into the United States.
Limitations:
This information has been taken from:
HALPERN, Sheldon W.; NARD, Craig Allen & PORT, Kenneth L. (2011). Fundamentals of United States Intellectual Property Law: Copyright, Patent, Trademark. Great Britain: Kluwer Law International BV.
As any right, the right to exclude that emerges from the grant of a patent has limitations, that can be classified as follows:
- The doctrine of the Patent Misuse
- Doctrines of First Sale, Implied License and Repair/Reconstruction
- Experimental Use Exception
- Governmental Inmunity
1. The doctrine of the Patent Misuse:
2. Doctrines of First Sale, Implied License and Repair/Reconstruction:
The infringement of a Patent starts with certain acts performed without authority. The mentioned authorization can be express or implicit.
The acts that give rise to an implicit authorization are:
2.1. First sale of the patented invention: Unless there is any agreement to the contrary, the user is free to use or resell that patented product after the first sale.
2.2. Where the circumstances necessitate an implied license: Under the ruling of the United States Court of Appeals, Federal Circuit, in the case Wang Laboratories Inc., v. Mitsubishi Electronics America Inc., the categories of conduct that give rise to an implied license are:
- Acquiescence
- Conduct
- Equitable estoppel
- Legal estoppel
2.3. Where a patented product has merely been repaired: The authorized purchaser may repair or replace damaged or worn parts of the patented invention necessary for use. However, this authorization does not allow the purchaser to reconstruct a patented product from the parts of worn-out products.
3. Experimental use exception:
Under §271(a), the mere use of a patented product constitutes an infringement. However, some theories suggest that the use of a patented product for non-commercial, experimental purposes is not an act of infringement, particularly to the pharmaceutical industry.
That exception is included as so in §271(e), which states that “it shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention […] solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use or sale of drugs or veterinary biological products”.
4. Governmental Immunity:
This topic has already been addressed, and it can be checked here, under the section “Uses by the US Government”.
