Infringement Analysis: 21 Defenses to a Patent Infringement Lawsuit
Copyright 2000-2011. Frederic M. Douglas. All Rights Reserved.
Determining whether a patent is infringed should entail the same process that a court would use. Generally, a court would make findings on validity, infringement, and enforceability. Below is a list of twenty-one specific defenses to patent infringement claims:
(1) Expired Patent,
(2) Noninfringement under 35 USC § 271,
(3) Anticipation by prior art under 35 USC § 102 (a), (b), (d), (e), or (g) (Subsection (g) repealed with America Invents Act),
(4) Obvious over prior art under 35 USC § 103,
(5) Double patenting,
(6) Improper inventorship under 35 USC § 102 (f),
(7) Improper scope of claims under 35 USC § 112,
(8) Fraud,
(9) Antitrust violation,
(10) Plaintiff does not own the patent (standing),
(11) License to the patent,
(12) Abandonment under 35 USC § 102 (c),
(13) Misuse,
(14) Laches,
(15) Intervening Rights,
(16) Lack of utility under 35 USC § 101,
(17) Inoperable invention under 35 USC § 112,
(18) Not statutory subject matter under 35 USC § 101,
(19) Foreign filing after non-publication request.
(20) Dis-joinder (Multiple defendants with no joint infringement).
(21) Prior commercial use – 35 U.S.C. Section 273.
I identified the above 21 defenses to patent infringement.
Note: Best Mode repealed by America Invents Act.
Do you know of any others? Did I get any wrong? Let me know
