Professor Robin Feldman filed a Supreme Court amicus brief in Kimble v. Marvel Enterprises which is before the U.S. Supreme Court. This case reviews whether a patent owner's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.
Some of the highlights from that brief co-authored with professor Alice Armitage:
"The case concerns contracts in which the patent holder insists on receiving royalty payments after the patent expires. The doctrine of patent misuse, however, frowns on attempts to expand the time or scope of the patent.
Over the last few decades, some lower courts have tried to eliminate the doctrine of patent misuse by holding that patent misuse exists only if the behavior rises to the level of an antitrust violation
Petitioners in this case ask the Supreme Court to apply the antitrust rule of reason to patent misuse cases. The antitrust rule of reason, which is complex and burdensome, is commonly perceived to be the death knell for any antitrust case and would certainly be the death knell for patent misuse cases
In the brief, Professor Feldman argues that patent law is not antitrust law, and antitrust tests are not appropriate for patent law questions.
Antitrust law is primarily concerned with parties that have market power, but the patent rules apply to all patent holders, regardless of whether they have market power; One cannot ask the patent office to extend the patent for a few years because 20 years is not long enough to determine its true value. That is a decision for Congress to make.
Nothing changes if the 20-year term is ill-suited for a particular industry, such as the life sciences. (A number of life science groups have filed amicus briefs as ell.) Any arguments to this effect are appropriately directed to Congress.
It is certainly true that when the patent term ends, the patent holder will no longer be able to exclude all others from the use of its invention. With the patent system, however, every potential innovator matters. A contract provision that limits the capacity and incentive for even one potential innovator to make scientific leaps after the expiration of the patent disrupts the balances created by Congress in the Patent Act.
Professor Feldman urges the Court to clarify that antitrust principles are not appropriate for a patent law, and to allow the courts to develop flexible approaches, based on patent principles, to this types of licensing issues."
Copyright © 2015 Robert Moll. All rights reserved.