The Patent Rights Paradox? (The Right to Exclude vs. The Right to Make, Use, Sell, etc.)
So what exactly does a granted patent give its owner the right to do? The most common response to this question is that a granted patent gives its owner the right to make, use, and sell the patented invention. The most common response, however, is NOT accurate. In fact, it is a potentially costly misunderstanding of what a granted patent entitles its owner to do. If you were under the impression that a granted patent gives its owners the right to make, use, and sell the patented invention, you may want to read on.
In the United States, a granted patent gives its owner the right to exclude others from making, using, offering for sale, selling, and importing into the United States (MUOSI)[i] the claimed invention.[ii] It does not, however, give its owner the right to MUOSI the claimed invention, despite conventional wisdom to the contrary. Perhaps the most common example that illustrates the “patent rights paradox” is the scenario in which an owner of a later-granted patent is required to obtain a license from the owner of an earlier-granted patent which would be infringed if the owner of the later-granted patent MUOSIs its claimed invention.
If that still sounds like legal mumbo-jumbo, maybe this “real world” example will help illustrate the “patent rights paradox.” For purposes of the illustration, let’s say that Cee Dee Berman owns a patent claiming what we would commonly refer to as a unicycle. In the broadest claim of Cee Dee’s patent, the following elements are recited:
· a frame;
· a seat;
· a pair of pedals; and
· a wheel.
Cee Dee’s invention
A short time later, Petey Berman, Cee Dee’s brother, gets a patent for what we would call a bicycle. In the broadest claim of Petey’s patent, the following elements are recited:
· a frame;
· a seat;
· a pair of pedals; and
· a pair of wheels.
Petey was able to get a patent for his invention because the Patent Office determined that the differences between Petey’s claimed invention and Cee Dee’s invention were not just obvious modifications. Specifically, the Patent Office concluded that the addition of a second wheel to Petey’s invention was more than an obvious modification of Cee Dee’s single-wheeled invention.
Petey’s invention
Despite the fact Petey was able to get a patent granted for his nonobvious two-wheeled invention, Petey cannot make, use, offer for sale, sell, or import into the United States (MUOSI) his two-wheeled invention without infringing the broadest claim of Cee Dee’s granted patent. Remember, the broadest claim of Cee Dee’s patent requires only a frame, a seat, a pair of pedals, and a wheel. Petey’s invention includes each of those elements, and therefore infringes Cee Dee’s patent’s broadest claim. While Petey’s invention also includes a second wheel, and even though that second wheel was found to be sufficiently nonobvious to merit him a patent, that patent does not give Petey the right to MUOSI his claimed invention. Petey’s patent does give him the right to prevent others, including his sister Cee Dee, from MUOSI his two-wheeled invention; but in order to avoid infringing Cee Dee’s patent, Petey must get permission from Cee Dee to MUOSI his two-wheeled invention. That permission usually comes in the form of a license agreement between the two patent owners.
As you may have already suspected, Cee Dee and Petey’s cousin Mimi, shortly thereafter got a patent for what we now call a tricycle. And, of course, license fee negotiations between Mimi and Petey and between Mimi and Cee Dee followed.
Mimi’s invention
If you have any questions about the “patent rights paradox,” patent obviousness, patent infringement, or negotiating patent licenses, please contact Paul at paul@brightwiselaw.com.
[i] For brevity and ease of reading purposes, the phrase “make, use, offer for sale, sell, and import into the United States” and its equivalent variations will intermittently be referred to using the acronym MUOSI which represents the first letter of each of the five exclusive rights conferred by a granted patent.
[ii] See 35 U.S.C. § 154(a)(1).
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