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THORPE, NORTH & WESTERN
A LIMITED LIABILITY PARTNERSHIP
9035 SOUTH 700 EAST, SUITE 200
SANDY, UTAH 84070
TELEPHONE (801) 566-6633
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GENERAL
E-MAIL: PATLAW@TNW.COM
HOME PAGE:http://www.xmission.com/~tnw
October 24, 1997
Mr. Robert Hinderliter
Delux Cleaning Supply of Ft. Worth
2513
Warfield Street
Fort Worth, TX 76106-7554
Re: Patent Misuse
Dear Robert:
Thank you for your telephone call of earlier today in which you requested that I provide you with a brief summary of patent misuse and its effects. The following is a very concise summary of patent issues and the effect which such conduct has on an issued patent.
Patent misuse involves conduct wherein the patentee (patent owner) attempts to expand the patent beyond the legal subject matter to which the patentee is entitled. Donald Chisum, in his treatise Chisum on Patents defines patent issues as follows:
| A patent owner may exploit his patent in an improper manner by violating the antitrust laws or extending the patent beyond its lawful scope. |
A. Chisum, Chisum on Patents § 19.04. If such misuse if found, the courts will typically withhold any remedy for infringement of the patents. This is generally true even if the infringer was not harmed by the misuse.
There are wide variety of actions which can constitute misuse. Such activities include tying arrangements in which the patentee attempts to obtain royalties on nonpatented products or components by tying their purchase or license to goods or licensing under a patent; covenants not to deal in goods which compete with the patented products; requiring licensees to take licenses under unwanted patents to obtain a license under a desired patent; requiring payment of royalties after the patent has expired; discriminatory licensing or royalty programs; price fixing; resale restraints and other limitations. What exactly constitutes misuse depends heavily on the facts of a given situation.
If misuse occurs, the remedies for infringement will be denied until the patentee has purged the misuse. This is typically accomplished by ceasing the abusive practices and allowing sufficient time for the dissipation of any harmful consequences.
I hope this answers your questions. If we can be of further assistance, please let us know.
Very truly yours,
THORPE, NORTH & WESTERN, L.L.P.
JJ. Randall B. Bateman
RBB/tlc