Controlling Intellectual Property: The Supreme Court Rules on Patent Exhaustion
On May 30, the U.S. Supreme Court issued a decision dealing with the doctrine of “patent exhaustion.” The case dealt with the sale of a patented product and the degree of control a patent holder (known as a patentee) can, or cannot, exercise over the product following the initial sale. The case did not involve a patent license, but the Supreme Court discussed patent exhaustion in the context of licensing as well. While the case dealt with the rather prosaic issue of printer cartridge sales, the broader issue of patentee control has wide-ranging implications on supply chain commerce. The case did not involve a bankruptcy filing or the application of bankruptcy law. That said, this important Supreme Court case may impact certain aspects of Chapter 11 bankruptcy practice and otherwise provides an opportunity to explore the issue of how intellectual property rights are affected by a bankruptcy filing.
Antecedentes del caso
The case, Impression Products, Inc. v. Lexmark International, Inc., involved printer manufacturer Lexmark. Lexmark is the patentee of patents related to printer cartridges. The U.S. Patent Act granted Lexmark, as with any patentee, the right to exclude others from using, offering for sale or selling its invention. Patent restrictions are designed to temporarily provide a patentee with “monopoly” powers in order to allow the patentee to maximize its profits. The prospect of being able to profitably exclude others from using an invention (typically for a period of 20 years) theoretically encourages parties to spend their time, effort, and money on new and useful innovations.
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