Chemical, pharmaceutical, and biotech companies and inventors spend countless hours and lots of money creating a drug to cure deadly diseases like cancer or diabetes or a new catalyst that will speed up a chemical reaction to make a wonder plastic. They protect their inventions by obtaining a patent.
For one reason or another, the patent owner may not be ready to make or sell the patented invention. The patent owner, for example, the university or the individual inventor, may be thinking of licensing the invention to someone else who can commercialize it and collect royalty payments rather than undertake efforts to secure the necessary funding to bring their inventions to life. works to market. However, much to the surprise and anger of the patent owner, they may find that an infringer is illegally making and selling the invention. Can the patent holder automatically obtain an order to stop the infringer’s operations? The answer may be surprising. The courts are not always sympathetic to the patent owner.
In the recently settled fight between internet giant eBay and the smaller company Mercexchange, which owned a patent for doing business on the web, Justice Clarence Thomas, representing the United States Supreme Court, ruled that the The patent owner, in addition to proving that the patent has been infringed, must prove that a number of things are lining up in his favor before he can prevent the infringer from copying the patented invention. This is a dramatic departure from the previous ruling by a lower court that, except in rare situations, a court must automatically issue an order to stop the infringer’s operations if the patent owner proves that their valid patent has been illegally copied.
In order to stop the infringer’s operations, the Supreme Court indicated that the patent holder must show that he has suffered without remedy due to the infringer’s actions; that there is no other remedy, like money, than to arrest the offender; how his difficulties outweigh the offender’s difficulties; and that the public interest would not be harmed by arresting the offender. This is commonly known as the “four factor test”.
In proving that forces are working in favor of the patent owner, as required by the Supreme Court, one of the questions that would arise is how strong the patent is, that is, can it survive an attack on its validity? In the words of Justice Anthony Kennedy, writing of the eBay case, “the potential vagueness and suspect validity of … the patents may affect the calculation under the four-factor test.”
Securing a strong patent is not trivial. It is important that the patent is filed promptly. For example, if the patent is applied for long after the invention has been published in a magazine or shown on a billboard, its validity or vitality is called into question. Or the patent may have been filed quickly, but was drafted in such a way that the patent does not adequately cover the invention. To be successful in stopping the infringer, or to obtain a substantial royalty or settlement from the infringer, it is essential that the patent be strong and sound.