Patent Exhaustion, Implied Licenses, and Have-Made Rights: Gold Mines or Mine Fields?

Authors

• Amber L. Hatfield

Abstract

Hard-fought patent battles may rage for years, only to settle quietly with a mutual exchange of patent rights. A notable example is the settlement between cellular industry rivals Ericsson and Qualcomm, who reached an agreement in March 1999 settling more than two years of intense litigation. That agreement marked a significant reversal in the parties' litigious posture, calling for the exchange of patent licenses and further paving the way for future collaborative efforts. But with relatively few reported decisions on the possible implications of third-party immunities, many modem agreements often fail to effectively anticipate and address them.

Depending on your perspective, product-based infringement immunities may be a "gold mine" or a "mine field." This paper seeks to educate parties on both sides of the equation - both unlicensed parties, who may be overlooking a valuable untapped resource, and patent owners, who may be failing to realize the full implications of licensing their competitors. Section I outlines the origins and applications of the doctrines that underlie product-based infringement immunities. Section 111 discusses the effectiveness of contractual attempts to limit or foreclose operation of these doctrines. Section IV provides suggestions on prosecution strategies to restrict the application of these doctrines. Section V concludes with a suggested analysis of all three doctrines, including key inquiries and possible defenses.

Recommended Citation

Amber L. Hatfield, Patent Exhaustion, Implied Licenses, and Have-Made Rights: Gold Mines or Mine Fields?, 5 Computer L. Rev. & Tech. J. 1 (2000)