Patent Misuse as defence against an Infringement Allegation
February 8, 2011
Attorneys, Patents
Patent misuse is a term that specifies a specific action by the patent owner that is considered a misuse of the patent. An allegation of patent misuse cannot be brought against a patent holder unless one is the defendant in a lawsuit of infringement brought by the patent holder who is supposedly guilty of patent misuse.
Patent misuse is thus a prohibited action by the patent owner. In the USA the term refers to a type of affirmative defence where one may defend an infringement on the grounds of the patent owner being guilty of misusing the exclusive rights granted when the patent was registered.
The defender in an infringement case can rely on the patent misuse defence only if the party can show that the patent holder expanded the physical scope of the patent beyond that which is permitted. The patentee cannot enforce the patent if the patentee is guilty of prohibited action which is called patent misuse. This doesn’t mean that the patent cannot be enforced in other instances, only that the patentee will not be able to recover royalties or damages from the defendant.
Instances of patent misuses can be where the patentee forces the licensee to also purchase other goods in order for the licensee to have license rights to the patent or where the patentee extends the patent term and thus extends the time period for which royalties will be payable. Patent misuse can occur when the patentee is guilty of a prohibited action such as an action that is in contrast with that allowed by anti-trust laws. It can also occur when the patentee extends the rights far beyond what the patent is granted for.
Contact us at Smit & Van Wyk for legal advice and professional assistance regarding patent misuse as a defence in court against an infringement allegation by the patentee.
Domain Name Trademark Infringement
March 25, 2009
Domain Names, Intellectual Property News, Trade Marks ™ ®
There are many people that argue that registering a domain name trademark is an infringement on the legal rights of other businesses who have the right to use names on a first come first serve basis. On the other hand a company must have the right to protect its trademark whether it is on the Internet as domain name or offline.
The problem that exists is that there are elements which park domains. That is, they register domain names not to use, but simply to prevent others from using the names.
This could have serious ramifications for a company that has spent a lot of money on developing brand awareness and cannot develop the same brand awareness because their domain name is parked.
They then have to purchase the domain name at an expensive price. By registering a trademark for a domain name, the company thus gets protection against future infringements where elements may try to cause public confusion.
It is however, the registrant’s responsibility to ensure that trademark infringement doesn’t take place when registering a domain name.
Click here to REGISTER A TRADEMARK
Contact Details for Smit & Van Wyk
Tel:
+27 (0) 12 349 7800
Fax:
+27 (0) 86 619 0493
E-mail:
enquiries@svw.co.za
Physical Address / Courier
Block A Apex Corporate Park
Quintin Brand Street
Persequor Technopark
Meiring Naudé Avenue
Pretoria
0184
South Africa
Click here to REGISTER A TRADEMARK
