Ch4. Patent Rights — Scope, Infringement & Licenses

Scope of Patent Rights

What a US Patent Grants (35 USC § 154):
The right to EXCLUDE others from making, using, selling, offering for sale,
or importing the patented invention within the United States

(Note: a patent does NOT grant an affirmative right to practice the invention
— practicing may still require licenses to other patents)

Patent Term:
20 years from the earliest effective US non-provisional filing date
(35 USC § 154(a)(2))
Patent Term Adjustment (PTA) may extend term for USPTO delays
Patent Term Extension (PTE) available for pharmaceutical patents (Hatch-Waxman)

Limitations on Patent Rights:
Research / experimental use exception (very narrow in the US)
Prior commercial use defense (35 USC § 273)
Patent exhaustion: once a patented product is sold by or with authorization
of the patent holder, patent rights in that item are exhausted

Patent Infringement

Literal Infringement (35 USC § 271(a)):
Each and every element of at least one claim is present in the accused product
or method (all-elements rule)
Even one missing element = no literal infringement

Doctrine of Equivalents (DOE):
Warner-Jenkinson Co. v. Hilton Davis Chem. Co. (1997)
Substantially the same function, in substantially the same way,
to achieve substantially the same result (function-way-result test)
Prosecution history estoppel limits DOE after claim amendments

Indirect Infringement:
Induced infringement (§ 271(b)): actively encouraging direct infringement
Contributory infringement (§ 271(c)): selling a component with no substantial
non-infringing use, knowing it will be used to infringe

Remedies (35 USC §§ 283–285):
Injunction (permanent or preliminary)
Damages: at least a reasonable royalty; lost profits if provable
Treble damages for willful infringement
Attorney's fees in exceptional cases
Criminal: not a federal crime in general (counterfeiting is under 18 USC § 2320)

Licenses

Exclusive License (analogous to 전용실시권):
Licensee holds exclusive rights within the licensed field/territory
Patent owner may be excluded from practicing depending on agreement terms
Must be in writing; recordation at USPTO strongly recommended

Non-Exclusive License (analogous to 통상실시권):
Patent owner may grant same license to multiple parties
No recordation required for validity; recording provides constructive notice
Licensee cannot further sub-license without permission

Compulsory / Statutory License:
Government use: US government may use any patent; patent owner entitled to
reasonable compensation (28 USC § 1498)
No general "compulsory license" for non-use in the US
(unlike some other national systems)

FRAND Licenses:
Licenses on Fair, Reasonable, And Non-Discriminatory terms
Required for Standard Essential Patents (SEPs) declared to a standards body

Patent Invalidity

Invalidity Grounds:
Prior art (§§ 102, 103); insufficient written description/enablement (§ 112);
ineligible subject matter (§ 101); inequitable conduct (Walker Process)

Inter Partes Review (IPR, 35 USC § 311):
Post-grant proceeding at the PTAB (Patent Trial and Appeal Board)
Any person may petition to challenge validity on § 102 or § 103 grounds
Must be filed within 1 year of being served a complaint alleging infringement

Post-Grant Review (PGR, 35 USC § 321):
Must be filed within 9 months of grant; any invalidity ground allowed

Effect of Invalidity:
A patent found invalid is treated as void ab initio — never existed
(retroactive to the filing date)

Scope Determination:
Inter partes review of scope (cf. Korean 권리범위확인심판) handled by
declaratory judgment actions in US district courts

Key Concept Cards

Patent Term = 20 Years from Effective Filing Date ★★★★★ : Calculated from filing date, NOT grant date; subject to PTA/PTE adjustments. Memory hook: 20 yrs from filing

Exclusive = Exclusivity + Writing; Non-Exclusive = Non-Exclusive + No Recording Required ★★★★★ : Exclusive licenses are property-like interests; non-exclusive are contractual. Memory hook: exclusive = like property; non-exclusive = contract

Patent Invalidity = Retroactive (Ab Initio) ★★★★☆ : A patent found invalid is treated as never having existed. Memory hook: invalid = void from birth

Practice Questions

Q. What are the requirements for the doctrine of equivalents to apply?

The accused element must perform substantially the same function (F), in substantially the same way (W), to achieve substantially the same result (R) — the FWR test (Graver Tank; Warner-Jenkinson). Two major limitations: (1) prosecution history estoppel — if the applicant narrowed a claim to overcome a rejection, the surrendered territory cannot be recaptured via DOE; (2) disclosure-dedication — subject matter disclosed but not claimed is dedicated to the public and cannot be recaptured via DOE (Johnson & Johnston). The doctrine prevents competitors from making insubstantial design-arounds.

Q. If an IPR invalidity petition succeeds, can the licensee recoup royalties paid before the patent was canceled?

Generally no. Retroactive effect means the patent is treated as if it never existed, but courts have declined to require disgorgement of royalties paid before invalidity was established (Lear v. Adkins doctrine allows licensees to challenge validity without stopping payments, but does not mandate refunds of already-paid royalties). Recovery is possible only if the license agreement contains a specific repayment clause on invalidity, or if fraud (inequitable conduct) constitutes independent grounds for rescission. Practically, invalidity is most valuable as a litigation defense — eliminating the ongoing royalty obligation — rather than a basis for recovering past payments.